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PATENTING AND PROMOTING 
INVENTIONS 



Patenting and Promoting 
Inventions 



BY 

Mois H. Avram, M.E. 



Member of American Society of Mechanical Engineers — Member 

of American Association for the Advancement of Science — 

Member of the Aeronautical Society of America — 

Member of Society for the Promotion of 

Engineering Education 



Lecturer on Industrial Engineering at New York University 



NEW YORK 

ROBERT M. McBRIDE & CO. 
1918 






Copyright, 19 18, by 
Robert M. McBride &^ Co, 



O 

MAy 22 1918 ^^ 



Published May, 1918 
©CLA499070 



^"T^HERE are those who in prosperity and 
^ affluence forget that all human activities 
can no more remain selfish, but are directed for 
the education, improvement and elevation of 
those who need the soft hand of encouragement. 
To you who have not shunned these responsi- 
bilities in the midst of your affairs, thus ener- 
gizing the future to safe prosperity, I dedicate 
this book. 

CoL H. J. Slocum 
Dudley Olcott, 2nd 
Howard C. Seaman 
Mrs. Emily E. Kelly 
James Houston 
Walter C. Teter 



CONTENTS 

CHAPTER PAGE 

Foreword 1 

Author's Foreword 3 

I— Why Inventors Fail 7 

I. Fate of Patents. 2. Corporation Patents. 

3. Proper Exploitation. 4. Creative Tempera- 
ment. 5. Ignorance of Prior Art. 6. Investiga- 
tion of Prior Art. 7. Preliminary Commercial 
Investigation. 8. Selection of Commercial De- 
signer. 9. Inventor's Eesponsibility for Com- 
mercial Designer. 10. Simultaneous Inventions. 

II. Preliminary Protection for an Invention. 

12. Lack of Capital. 13. Errors of Judgment. 
14. Unscrupulous Inventors. 15. Cooperation. 
16. Unscrupulous Patent Attorneys. 17. Infringe- 
ment Litigation. 18. Premature Patents. 

ll — The Origin and Evolution of and a General 
Review of the Laws Governing the Grant- 
ing of Patents 28 

1. Origin of Patents. 2. Abuse of Special Privi- 
leges. 3. Henry III and His * ' Easterlings. " 

4. Henry IV and Queen Eiizabeth Grants. 5. Pat- 
ent Monopoly Case, Darcy vs. Allin, year 1602. 

6. Belief by Statute of Monopolies, year 1623. 

7. Present Patent Laws. 8. Eights of Inventor. 
9. Patent Interpretation. 10. Bell Telephone 
Case. 11. Perfection no Eequisite to Obtain Pat- 
ent. 12. Edison's Incandescent Lamp Case. 

13. Patentability. 14. Classes of Inventions and 
Eespective Definitions. 15. Process and Machine 
Patents. 16. Manufacture and Construction Pat- 
ents. 17. *' Composition of Matter" Patents. 
18. Design Patents. 19. Eeissue Patents. 20. ^ * Dis- 
claimer'' Protection. 21. Assignment. 22. Pat- 
ent as Personal Property. 23. Marking Patented 
Articles. 

Ill — Protecting an Invention or Discovery by- 
Patent 56 

I. Platent Solicitor. 2. Copies of Patent. 3. Peti- 
tion and Oath. 4. Drawings. 5. Specifications. 
6. Title of Application. 7. Claims. 8. Division of 
Claims. 9. Board of * ' Examiners-in-Chief " Ap- 
peal. 10. Commissioner of Patents Appeal. 

II. Court of Appeals. 12. Fees. 13. Time of 
Applications in Patent Office. 14. Abandonment 
and Eevival of Applications. 15. Forfeited Appli- 
cation. 16. Interference. 17. Limitations of a 
Patent Grant. 

vii 



viii CONTENTS 

CHAPTER PAGE 

IV— Foreign Patents 72 

1. Foreign Eight Promotion. 2. Indiscriminate 
Patents Abroad, 3. Business Abroad. 4. Life of 
Patent Grants. 5. Eules for Foreign Applications. 

6. International Convention Governing Patents. 

7. Examination of Inventions in Different Coun- 
tries. 8. Value of Protection. 9. Trade Mark 
Registration. 

V— Patent Attorneys 89 

1. Credulity of Inventors. 2. Responsibility of Pre- 
paring Patent Applications. 3. Qualification of 
Patent Attorney. 4. Advertising Patent Attor- 
neys. 5. Reliable Patent Attorneys. 

VI — Expert Investigation 109 

1. Report on X Ignition System, (a) General 
Information on Ignition Systems, (b) The High 
Tension Magneto. (c) The Induction Coil, 
(d) The Wipe Spark System, (e) The Atwater- 
Kent System, (f) Spark Plugs, (g) X Ignition 
System, (h) X System Applied to Ford Car. 
(i) Compression Test, (j) Time Tests, (k) Ad- 
vantages of X System. (1) Disadvantages of X 
System, (m) Report on Patent Situation X Igni- 
tion System. (n) Conclusion. 2. Report on 
^' Bacon'' Multiplying Machine, (a) Findings, 
(b) Recommendation, (c) Engineering Report, 
(d) Patent Situation, (e) Investigation of Com- 
mercial Field, (f) Findings of a Commercial 
Nature. 

VII— Evaluating a Patent 133 

1. Distinction Between an Invention and a Patent. 

2. Two Classes of Patents. 3. Forecast as to 
Value of Inventions. 4. Factors Considered in 
Forecast. 5. Patent Protection. 

VIII — Promoting an Invention 140 

I. Bankers. 2. Private Banks. 3. Requirements 
for Banking. 4. Individual Financing. 5. Syndi- 
cate Financing. 6. Patent Selling Abuses. 
7. Advertising Stock Salesmen. 8. Promoter. 
9. Reporting Agencies. 10. Commercial Agency. 

II. Promotion. 12. Worth of an Invention. 

13. Steps for Development of an Invention. 

14. Westinghouse, George. 15. Legitimate Pro- 
moter. 16. Legality of Promotion. 17. Insuffi- 
cient Financing. 

Conclusion 165 



AUTHOR^S FOREWORD. 

With the passing of every century seems 
to have come the dawn of a new era, and each 
succeeding one, as it slowly rolls around, goes 
down into history to be referred to by all 
future generations by that title which best 
describes its dominant note, race, or most 
characteristic achievement. So with the birth 
of the Nineteenth Century sprang into life a 
new race, the race of inventors, destined in 
turn to bring about the most romantic and 
epochal era of civilized man. The Era of 
Invention. 

Certainly prior to that time there existed 
no such race. To the centuries that went be- 
fore, the word invention had little meaning. 
True, there was a straggling handful of pro- 
genitors who came before, but this virile and 
scattered few followed for the most part dis- 
cursive careers, and the reward for their ef- 
forts came in the form of bitterest contempt 
or persecution at the hands of their contem- 
poraries. They were iconoclasts, thought to 
be, in many instances, emissaries of Satan 
himself. Their discouragements were of a 
nature calculated to destroy all hope, and to 
snuff out even the last flickering flame of 
genius. 

If we are to believe the tale that Voltaire 



2 AUTHOR'S FOREWOED 

tells US, it was not until Sir Isaac Newton's 
trend of philosophic thought was rudely 
awakened by a blow upon the head by a fall- 
ing apple, that that great natural law, gravi- 
tation, came to be generally recognized, in 
about the year of our Lord 1666. 

This book, originating in my own belief and 
experience, is written in the earnest spirit of 
helpfulness, and is based for the most part on 
my many years of intimate contact with the 
varied and intricate problems of industrial de- 
velopment. I know of no popular handbook 
of unprejudiced advice for the guidance of 
those interested in the matters pertaining to 
inventions and inventors. 

Seldom it is that the inventor or the man of 
money to whom he looks for co-operation is 
equipped either by training or experience to 
cope with the problems that confront him. 
The design of this volume is to point out the 
many pitfalls that beset the path of the in- 
ventor and the investor alike, illustrated by 
concrete examples of failure and success, and 
to indicate in as illuminating a manner as pos- 
sible the proper procedure in obtaining pro- 
tection for and in developing patentable ideas, 
that they may become commercial successes. 

It can be stated with full consideration for 
accuracy, that not more than one invention 
out of every thousand brings profit to its 



AUTHOR'S FOREWORD 3 

sponsors, while a goodly proportion of the 
failures spell financial ruin and wasted years 
for their protagonists. 

It is far from my desire to deplore that 
ever-present temptation for business adven- 
ture, or in any way to discourage inventive 
endeavor, for in these we have the very es- 
sence of our industrial progress. We must, 
however, face the cold fact that millions of 
dollars are squandered annually on inventions, 
and scores of careers blighted in the process. 
With expert and unprejudiced advice avail- 
able, much of this money would not be lost, 
and many inventions which end in utter fail- 
ure would take their rightful place in the in- 
dustrial world as departures or improvements 
of pronounced mechanical reliability and use- 
fulness. On the other hand, thousands would 
never be attempted. The enormous waste oc- 
casioned by the lack of this directing skill can 
ill be afforded, and no effort should be left un- 
tried to divert these misdirected funds into 
channels which lead to definite accomplish- 
ment. 

According to reliable statistics, approxi- 
mately half a Million dollars represents the an- 
nual outlay on the part of capitalists and 
individuals, who at the instigation of inven- 
tors and promoters give their support to new 
inventions and various commercial projects. 



4 AUTHOR'S FOREWORD 

Inventor, Promoter, Capitalist. Here we 
have the trinity, each factor having the same 
ultimate aim, but usually with divergent 
views as to how this aim is to be realized. The 
inventor has always been confronted by the 
lack of capital, and must seek the services of 
the promoter, while the promoter is depend- 
ent upon the inventor as the original source of 
his projects. The capitalist, in turn, must 
look to both these factors to furnish profitable 
avenues of investment, but he must further 
rely upon the services of the expert engineer, 
who as investigator and organizer can recon- 
cile their differences and indicate the way, or 
pilot an enterprise to success. 

The author has not attempted to make this 
volume an exhaustive text-book on patent law, 
promotion, or finance, but it has been his aim 
to give the reader sufficient material and 
warning, to lead his footsteps into proper 
paths should he ever seek the protection of 
our patent laws or be confronted with any of 
the problems of our complex industrial life. 

It is, therefore, with the hope that it may 
accomplish its purpose, and tend to prevent 
future errors in the great field of endeavor of 
which it treats, that this book is respectfully 
presented to the public. 

Mois H. AvRAM. 
New York, 1917. 



FOREWORD 

The keynote of Mr. Avram's book is the in- 
sistence upon the work of the trained expert, 
whose cooperation with the inventor will pro- 
duce results more surely and with less of 
waste than the ragged and fumbling proced- 
ure that is usually followed. 

The work will undoubtedly be of great 
value to the inexperienced inventor, and to 
many an experienced inventor whose experi- 
ence has not yet taught him the wisdom that 
the book has to offer. The snares and pitfalls 
that beset the inventor are so numerous as 
frequently to rob him of the fruits of his la- 
bors. Mr. Avram shows what must be done 
and what avoided if the inventor, having an 
idea of genuine worth, is to secure his patent 
and place it on the market to the best ad- 
vantage. 

But Mr. Avram goes further than this. He 
recognizes the fact that the success of the in- 
ventor concerns the public welfare, and the 
discussion rises in the concluding paragraphs 
to a creative proposal which seems to me of 
far-reaching significance. In these para- 
graphs the author has put forth the germinal 
idea of a project for the conservation of the 
labors of inventors generally. 

5 



6 FOEEWOED 

Mr. Avram is an alumnus of the School of 
Applied Science of New York University, who 
has achieved eminence in his profession 
through unremitting labor, joined with a fine 
combination of constructive imagination and 
rigorous standards of excellence. These 
qualities have lent value to this volume, which 
I have had the privilege of seeing in the 
printer's proof and have read with the keenest 
interest 

Elmek Ellsworth Brown. 
New York University, January, 1918. 



CHAPTER I. 
WHY INVENTORS FAIL. 

1. Fate of Patents. 2. Corporation Patents. 3. Proper Ex- 
ploitation. 4. Creative Temperament. 5. Ignorance of 
Prior Art. 6. Investigation of Prior Art. 7. Preliminary 
Commercial Investigation. 8. Selection of Commercial De- 
signer. 9. Inventor's Responsibility for Commercial Designer. 
10. Simultaneous Inventions. 11. Preliminary Protection 
for an Invention. 12. Lack of Capital. 13. Errors of Judg- 
ment. 14. Unscrupulous Inventors. 15. Cooperation. 16, 
Unscrupulous Patent Attorneys. 17. Infringement Litiga- 
tion. 18. Premature Patents. 

Every week there are on the average one 

thousand patents granted by the Patent Office 
at Washington. This number by no means 
comprises the total of applications submitted. 
Over twice this number of refusals for every 
manner of claim are a part of the weekly 
routine of the department. Each and every 
one of these applications, whether allowed or 
not, represents to its respective applicant a 
certain outlay of money, in many instances a 
considerable amount, and this before even the 
first steps of commercial development are 
attempted. The natural query is: What is 
the ultimate fate of all these patents? 

7 



8 PATENTING AND PROMOTING 

The United States Patent Office has to date 
issued more than 1,200,000 patents, and it is 
quite safe to approximate that not more than 
ten per cent of this vast number have ever 
truly seen the light of day. A far smaller 
percentage have reached the market as com- 
mercial successes. Irrespective of the initial 
expense connected with this annual flood of 
patents, which, as can readily be seen, is enor- 
mous and for the greater part lost, we must 
consider the millions upon millions of dollars 
that have been and are still being wasted upon 
the development of these abortive projects. 

We have constantly ringing in our ears 
the colorful tales of obscure men who have 
attained to prominence and great fortune 
through some happy stroke of invention, but 
the world hears little of the scores of fortunes 
that are lost, or of the useful lives that have 
been wasted upon badly conceived or mal- 
administered inventions. The industrial trag- 
edies are lost to view in the golden glow of 
brilliant achievement, while the actors go 
down to oblivion under that inexorable law of 
"the survival of the fittest." There are, of 
course, included in this great aggregate of 
inventions covered by patents a certain pro- 
portion which were never designed for the 
market, being improvements of existing meth- 
ods evolved through practical experience by 



WHY INVENTORS FAIL 9 

men connected with large concerns, and be- 
coming the property of these individual firms 
or corporations by agreements entered into 
between employers and employees. Such 
patents are obtained to prevent competitors 
from using similar devices, and of course 
give the owners thereof legitimate advantage 
over other concerns manufacturing like 
products. Many large corporations maintain 
at great expense experimental departments 
solely for this purpose, and retained in these 
departments is a large portion of the finest 
inventive brains of the world. The Edison 
plants afford a splendid example of this char- 
acter of organization. Many of the large 
concerns also maintain special departments 
consisting of men who are experts in patent 
law and authorities on the history and nature 
of all inventions pertaining to their employ- 
ers' various activities. With the foregoing 
qualification, it is safe to stand on the premise 
that not more than one invention in a thou- 
sand is a commercial success. 

This gigantic proportion of failure goes a 
long way in making up our great national 
waste, and could to a considerable degree be 
avoided if only the simple and approved meth- 
ods of analysis and procedure were observed. 
It must not be thought that all failures are 
due to lack of ability or of genius on the part 



10 PATENTING AND PEOMOTING 

of the inventor, or to the absence of true 
merit in the inventions themselves. Such is 
far from the fact. Many an invention, doomed 
for all time to bear the hall mark of total fail- 
ure, might have been a signal success had it 
fallen in proper hands, while others, with far 
less merit, have through the superlative 
genius displayed in their exploitation reaped a 
harvest of dollars for those in interest. 

The causes which are to the largest extent 
responsible for this huge percentage of fail- 
ure are many, and some of a character diffi- 
cult of definition. The temperament that 
tends toward creative genius is seldom com- 
bined with sound business judgment or intui- 
tion, while the element of suspicion is fre- 
quently highly developed. This last charac- 
teristic has led to unending loss and disap- 
pointment. 

Only recently a very pathetic case was 
brought to the attention of the writer, but un- 
fortunately too late for any mending to be 
of avail. The man had learned his les- 
son, but had paid a frightful price. Equipped 
with the most meagre knowledge of me- 
chanics, or the relation and inter-rela- 
tion of mechanisms, and wholly unversed in 
the art of designing, he had attempted the 
solution of a most intricate mechanical prob- 
lem, an important feature of which had 



WHY INVENTORS FAIL 11 

baffled all who had ever attempted it. Con- 
vinced that he had hit upon a most novel con- 
ception, and fearful lest his idea be stolen by 
some unscrupulous person if he sought advice 
or criticism, he equipped a tiny workshop in 
his own apartment, and without the slightest 
attempt at investigation into the prior state 
of the art in which he essayed to launch upon 
the career of an inventor, he commenced his 
experiments. For four long years he strug- 
gled in secret, devoting his entire time to the 
task. In the meantime the few thousand dol- 
lars he had managed to save slowly dwindled 
away. After building and rebuilding, he did 
succeed in reducing his machine from a com- 
plicated affair to a simpler mechanism easy of 
design and construction. Imagine his con- 
sternation when, upon seeking patent protec- 
tion for his invention, he discovered that he 
had only produced something essentially the 
same as that which had been created thirty 
years before, and had since been put into suc- 
cessful operation. Considerable of his time 
had been devoted to inventing features of the 
machine that were most simple of construc- 
tion in any properly equipped machine shop, 
and required little exercise of the inventive 
faculties. Furthermore, there was none of 
these features which was not anticipated by 
prior patents which had expired. 



12 PATENTING AND PROMOTING 

The lesson contained in this story plainly 
illustrates a very vital and almost certain 
cause for failure, for apart from his ignor- 
ance of mechanics and design, had he sought 
expert and unprejudiced advice in the begin- 
ning, he surely would have seen the futility 
of attempting his invention. 

The experience of this inventor is by no 
means a rare one. It is cited as typical of 
many. It is therefore most important to lay 
particular emphasis on the absolute and im- 
perative need, in all cases, of a careful pre- 
liminary investigation into the exact state of 
the art, prior and present, pertinent to the 
problem in hand, before any time or money 
is expended on its development. A search 
of the files at the Patent Office is a matter of 
trifling expense as compared with the expense 
of development, and is fully explained in a 
later chapter. The result of this alone fre- 
quently puts a sudden check on unbridled en- 
thusiasm, and sends many a would-be in- 
ventor back to pursuits far better adapted to 
his talents. 

There is no avenue of human activity more 
crowded with men unconscious of the diffi- 
culties they must overcome to reach their goal 
than the tortuous road of the inventor. Ig- 
norance, in fact, plays an astonishingly large 
part, not only in the conception, but in the 



WHY INVENTORS FAIL 13 

promotion of new inventions. The inventor 
is often an idealistic dreamer, unable to 
grasp the true economic value of his problem, 
and with his eyes f ocussed on but one phase 
of a situation, which should be viewed from 
many angles. Quite as fatal to his success is 
a lack of knowledge of design, or of a thor- 
ough acquaintance with the history of devices 
kindred to that which he seeks to create. 

This clearly shows the wisdom of a definite 
course of procedure in every case as regards 
preliminary investigation. After the entire 
state of the art has been minutely studied, 
there should immediately follow an exhaust- 
ive investigation of every possible ramifica- 
tion of the case in hand, not alone from the 
technical side, but as to its commercial pos- 
sibilities as well. How these investigations 
are conducted on behalf of inventors and in- 
vestors will be fully covered in a later chap- 
ter. Since it really seems that inventors are 
usually able to secure funds in one way or 
another for various expenses incidental to 
their undertakings, it also seems evident that 
they avoid such an investigation only because 
they fail to see the vital need of it. Of course, 
as has been stated, suspicion plays a large part 
in this connection. The fees appear large at 
times, and apparently the prudence of such 
a course of action seldom appeals to them, 



14 PATENTING AND PROMOTING 

although to follow it would in countless cases 
save years of wasted effort. 

The writer is fully aware of the great num- 
ber of experienced inventors to whom the 
strictures contained in this volume do not ap- 
ply, but unfortunately this group make up a 
very small minority. 

The man who is called upon to finance an 
invention should demand exactly the same 
course of procedure before risking capital in 
any such venture. To amplify this statement 
let us review the methods most commonly 
pursued by inventors. It is much as follows : 

Once they have their idea — usually, in their 
own minds, the basis of a wonderful and rev- 
olutionary invention — their first step in all 
probability is to engage a draftsman or de- 
signer to lay it out on paper. Frequently 
they attempt this work themselves. An ex- 
perienced inventor will exercise extreme care 
in the selection of his designer, and with par- 
ticular attention as to whether he may have 
practised along similar lines; others unfor- 
tunately feel secure in what the word ^^de- 
signer" implies, and will in many instances 
retain one of varied or uncertain experience. 
This latter type of inventor, satisfied that he 
has invented, leaves the development to his 
designer. This individual he takes for granted 
is well versed in the art of technics, and to 



WHY INVENTOKS FAIL 15 

him he looks to bring his ideas into being. 
Since most ideas can take many different 
forms mechanically, an invention will nat- 
urally take that form which is most character- 
istic of its designer. Finally the plans are 
completed and look very attractive indeed, 
regardless of the numerous dimensional er- 
rors they may contain, or of how badly the 
principle of the invention is worked out. 
Now, with his invention thus propounded on 
paper, the natural feeling is one of confidence, 
and as the child of his imagination is about 
to be born in the form of a working model, 
success and wealth seem almost within his 
grasp. So the model is commenced. 

It is a proven fact that no draftsman or 
designer can avoid errors in the laying out of 
numerous plans, while there are many who in 
controlling their preparation are given to 
concealing unworkable features. Such blun- 
ders necessitate change after change, while 
time is being wasted and expense is growing, 
bringing the patience of the most tolerant and 
optimistic financial backer to the very break- 
ing point. Meanwhile the inventor, ever 
eager to prove the value of his invention, must 
assume entire responsibility and blame for 
the faulty development. It may easily be two 
years before it slowly dawns on him that there 
must be something seriously wrong with his 



16 PATENTING AND PROMOTING 

designer, and he decides, either on his own 
initiative or through pressure on the part of 
his moneyed advisors, to replace him by an- 
other, who in turn deems himself a greater 
genius. This newcomer considers the work 
of his predecessor full of impossibilities, and 
proceeds with the original idea on a radically 
different basis. And so the years roll by, un- 
til finally we have one idea represented, we 
shall say, by a dozen different models, by per- 
haps a dozen different men, not one of which 
stands forth with sufficient merit to warrant 
its commercial manufacture. Nevertheless, 
the inventor will not admit defeat. That well- 
known aphorism, ^^Hope springs eternal in the 
human breast,'' polished to brightness by the 
tongues of passing generations, is certainly 
exemplified in the temperament of the in- 
ventor. Patience and belief in self become the 
callous part of his built-up nature, and he will 
never let go as long as there is a struggle left 
in him. Fate has apparently ordained that 
every idea shall, somewhere, sometime, find 
someone possessed of sufficient receptive imag- 
ination to become its sponsor, who will lend 
financial countenance to its future possibil- 
ities. From out all this chaos a triumph may 
eventually emerge, but not before a large for- 
tune has been squandered ; and in many such 
cases a few thousands would have sufficed. 



WHY INVENTORS FAIL 17 

More often comes dismal failure in exchange 
for years of labor, loss of faith in human 
kind, and much money. Could anything be 
more convincing in showing the wisdom of in- 
stituting a thorough scientific preliminary 
analysis at the inception of any new invention. 

Let us now proceed to another phase of the 
question, and show the fallacy of attempting 
an invention without consulting at least one 
responsible person. 

It should be ever borne in mind by inventors 
that, no matter what problem they may at- 
tempt to solve, it is decidedly more than likely 
that at least one or more inventors are work- 
ing concurrently with them on the same idea. 
Where any invention, particularly if it is 
worth while, does not challenge the inventive 
skill of more than one individual, it is the 
rare exception, and far from the rule. It will 
be seen, therefore, that for this reason many 
complications may arise when patent protec- 
tion is sought, and a great number of splendid 
inventions have been lost forever to those who 
evolved them, solely through ignorance of the 
laws governing the granting of patents. Such 
cases give rise to interferences, one of the 
most heart-breaking and expensive proceed- 
ings in patent practice. The matter of valid- 
ity of patents and the approved course to fol- 
low in obtaining them will be explained later 



18 PATENTING AND PROMOTING 

on in this book. It is necessary, however, at 
this point, in order to show how the fruits 
of a valuable invention may be lost to its 
rightful owner, to bring the following facts to 
the attention of the reader. 

A patent to be valid must not be such that 
the monopoly, granted by it for the period of 
seventeen years, would preclude any member 
of the public from doing that which prior to 
the invention he or other members of the 
public have been in a position to do by reason 
of a common knowledge of the art, prior use, 
publication or disclosure of the invention. 
Publication or disclosure ^ however^ does not 
include information given to persons confi- 
dentially consulted or employed. The follow- 
ing incident, an actual occurrence known to 
the writer, will convey the significance of the 
foregoing. 

A short time ago an inventor brought to 
the office of a most talented patent attor- 
ney a new talking machine which he 
had invented. He considered it superior 
*in every way to any other machine on the 
market, and whether or not he was correct in 
this respect, his invention had been most 
skillfully worked out, and was extremely val- 
uable. An examination of the art failed to 
disclose that his invention was anticipated 
by any other patents, and therefore applica- 



WHY INVENTORS FAIL 19 

tion was at once made to protect it properly 
by patent. Almost immediately after the pat- 
ent was published an interference was de- 
clared. This is what had happened: The in- 
ventor had worked in absolute secrecy and 
had not disclosed his invention to a single per- 
son. He had not only worked out his ideas, 
but had actually reduced them to a machine 
which worked perfectly. This he had kept 
under lock and key for a considerable time 
before consulting his attorney. In this par- 
ticular instance another inventor had hit 
upon the same idea, worked it out and ap- 
plied for a patent, all of this transpiring sub- 
sequent to the time the first inventor had 
reduced his invention to practise. The first 
inventor, however, had not one slight bit of 
evidence, beyond his personal word, to prove 
the date of his conception or anything else in 
the way of dates in connection with his work. 
The second inventor had a carefully kept rec- 
ord of dates, all of which he wisely had at- 
tested by reliable witnesses. When testimony 
was taken, the first inventor found to his sor- 
row that one's word alone, in matters where 
selfish motives are involved, did not stand in 
point of law, and while he undoubtedly was 
entitled to his patent, he could not prove his 
case, and his invention was lost to him forever. 
All correspondence of every nature relating 



20 PATENTING AND PROMOTING 

to an invention should be carefully preserved, 
and in exact sequence as to dates, as should 
all vouchers for material, labor, etc. Such 
evidence when systematically dated and filed 
cannot be gainsaid. The inventor should at 
the very outset select a reliable person to act 
as witness, sufficiently intelligent, and prefer- 
ably familiar with machines or inventions of 
a similar nature, to whom every phase of the 
invention should be explained. Sketches and 
a description of the invention should be signed 
and dated by the inventor and by the witness. 
With such a witness available, the principal 
steps of development can be proven exactly 
as to dates, and the testimony of such a wit- 
ness cannot be refuted. 

Lack of capital is undoubtedly, in numer- 
ous cases, a vital reason for failure. Seldom 
is wealth found to be the willing handmaiden 
of inventive genius. While this element cer- 
tainly plays a large part, it does not do so 
to the extent that is generally supposed. 

Mark Twain once received a letter asking 
him to give his endorsement of a book writ- 
ten on the subject of patents and patentees. 
Clemens characteristically replied: 
Dear Sir: — 

I have, as you say, been interested in inventors 
and patentees. If your book tells how to exter- 
minate inventors, send me nine editions. Send 
them by express. Very truly yours, 

Samuel Clemens. 



WHY INVENTORS FAIL 21 

Mr. Clemens sank $190,000 in backing a 
typesetting machine, which is to-day exhibited 
in the Sibley College for Engineering as "the 
costliest piece of mechanism for its size ever 
constructed/^ Present-day investigation meth- 
ods would have saved our beloved Mark his 
fortune if they could have been put into opera- 
tion at the outset of this invention. 

Lack of judgment and knowledge on the 
part of the inventor and promoter as to how 
best to employ the finances at their command, 
even though it be a limited amount, are more 
often the cause of failure than the mere lack 
of funds. 

A small group of men, a capitalist among 
them, were persuaded to finance the develop- 
ment of an automatic ticket-vending machine. 
The inventor, a very intelligent young man, 
had had no experience as an inventor prior 
to the time he attempted this machine. After 
a certain amount had been invested, the ma- 
jority of the men interested depended for 
funds principally on the aforesaid capitalist, 
who was thus compelled to become the most 
heavily interested, though much engrossed 
with other affairs. 

The plan of the machine was to deliver au- 
tomatically one, two or five tickets, in return 
for the proper coin to cover each sale. It was 
very complicated and unreliable, and was 



22 PATENTING AND PEOMOTING 

costly to construct. Another weak feature 
of the proposition was that the machine was 
designed to cover a single and limited field 
of use, whereas it could have covered four dif- 
ferent fields. Each of these weaknesses would 
have been disclosed, had an investigation been 
instituted at the very beginning, when the in- 
ventor sought capital for his idea. One very 
important thing would have been discovered, 
which would have led to an entirely different 
approach in the development. That was the 
fact that the patents applied for were valuable 
over any other patents covering a similar ma- 
chine, such as are almost universally in use 
in motion picture theatres. Under such pat- 
tents it would have been possible from the 
start to construct a small machine suitable for 
many purposes, and one that could be man- 
ufactured and sold at a profit to any concern 
having need for a ticket selling and recording 
machine. The coin control device, which 
under any circumstances was too expensive 
and wholly unreliable, could have been elim- 
inated. However, before all these points 
were brought to the attention of those inter- 
ested, the money allotted for the venture, 
amounting to some $125,000, had been spent 
with practically no result. The men behind 
it had reached a point where they were nat- 
urally enough discouraged, if not disgusted, 



WHY INVENTORS FAIL 23 

and were not inclined to give the proposition 
further financial aid. So that this enterprise 
by force of unguided circumstances is yet at 
a standstill and has been for over two years, 
although, if handled in the manner just out- 
lined, these patents would have unquestion- 
ably proven valuable. This is a very typical 
illustration. 

There is a certain class of inventors about 
whom it is very difficult to speak in terms 
of moderation. Many of them are the veriest 
rascals who defile the paths of progress and 
bring discredit upon worthy and sincere men 
who need and should have financial assist- 
ance. The writer refers to that not infrequent 
variety of inventor represented by men who 
are utterly devoid of scruple or consideration 
for their backers in the manner in which they 
handle the funds placed at their disposal. 
They are often on the lookout for yet an- 
other credulous person with a fortune, while 
engaged in wantonly squandering the funds 
which they have in hand. In many cases their 
stock in trade consists of elaborate plans and 
specifications, which they use as a bait, but 
which they know in their hearts will never get 
beyond that state. Proper investigation would 
soon put a stop to such activities, and the 
money thus wasted would find proper chan- 
nels of employment. Fortunately, this class 



24 PATENTING AND PROMOTING 

of individuals is in the minority; it is more 
frequently the lack of sound business judg- 
ment than of principle that makes for failure. 

The fact that there are unscrupulous in- 
ventors of this character makes it the more 
imperative that capitalists and backers of in- 
ventors should insist upon a thorough pre- 
liminary investigation of any development 
proposition placed before them. As previ- 
ously stated, such an investigation should 
cover a careful study of the prior art to de- 
termine the patentability; an examination by 
engineers and skilled mechanics into the de- 
signing and general construction with a view 
to profitable manufacture, and a thorough 
study of the possible market for the device. 
If such an investigation is conscientiously car- 
ried out, the type of inventor last referred to 
would find it difficult to obtain capital for car- 
rying out his wonderful schemes. 

In many instances the entrepreneurs of 
epochal inventions are able to indicate only 
the general course for their future develop- 
ment. For this reason all who are called upon 
to furnish capital for such purposes should 
look well to the question of just who is best 
fitted to cooperate with the inventor in per- 
fecting his invention. In many cases no one 
but the inventor himself sees into the very 
heart of his discovery, and for this reason the 



WHY INVENTORS FAIL 25 

greatest tact and care should be exercised 
not to get away from his original idea or prin- 
ciple and thus destroy it. There are cases of 
just this nature, where those who attempted 
the development have failed to grasp fully 
the ideas of the genius who has conceived 
them, and have spent more than a million 
dollars before they realized that in the in- 
ventor himself rested that peculiar vision and 
understanding which alone could make the in- 
vention a success, or at least must be grasped 
by the engineers to avoid failure. Such cases 
are not infrequent, and the following should 
illustrate the case in point. 

Back in 1908 the old Field Museum in Chi- 
cago was badly in need of repairs, and it was 
decided to give the building a coating of gyp- 
sum stucco. The old method of applying 
stucco is primitive and expensive, and on this 
job a great invention was conceived. Carl E. 
Akeley invented the cement gun. This in- 
vention was destined to revolutionize certain 
methods of building construction. The gun 
is designed for "shooting^' a coating of ce- 
ment, mortar, or the like on construction sur- 
faces, as, for instance, on brick, concrete, steel, 
tile or woodwork. It is operated with com- 
pressed air, and the mortar is deposited in a 
uniform manner with so great a force that 
it not only adheres, but also expels by its im- 



26 PATENTING AND PROMOTING 

pact all superfluous air and water, and in this 
way becomes of a density that makes it an 
excellent waterproofing medium. 

Although the first principles of the inven- 
tion have proven to be absolutely correct, the 
development of the cement gun saw many 
trying days for its inventor and backers, due 
to the fact that the men in charge of the de- 
velopment failed to grasp the problem, and 
not until the inventor was again called into 
the councils of those exploiting it did the gun 
really come into its own. Its future is now 
established, but more than a million dollars 
was lost, and the inventor is just beginning 
to reap the benefits of his genius. 

One of the most vital causes of the failure 
of inventors can be laid at the door of in- 
competent or unscrupulous patent attorneys. 
A timely warning in this regard will be 
sounded in a later chapter, for it can be stated 
advisedly that under the existing methods of 
patent procedure the value of a patent de- 
pends as largely upon the skillful preparation 
of specifications and claims as upon the merit 
of the invention itself. 

There are various dangers and possibilities 
for failure which threaten the inventor who 
takes out his patent prematurely. The appli- 
cation should be filed as soon as the scope of 
the invention is fully realized and not be- 



WHY INVENTOES FAIL 27 

fore. Of course, it must always be borne in 
mind that the inventor should have the ad- 
vantage of anterior date of application, for, as 
has been stated, most problems worth solv- 
ing arouse the ambition of more than one in- 
ventor. 

The application once filed, the inventor 
should not seek to have the issue unduly hur- 
ried through the Patent Office, and quickly to 
obtain his patent. He should then be more 
concerned in perfecting his invention, other- 
wise he may find that his claims do not fully 
cover the invention, and that further pat- 
tents are necessary, which increases the ex- 
pense and involves the question of foreign pat- 
ent protection. Worse yet, he may find to 
his sorrow that he has obtained a narrow and 
practically worthless patent, which precludes 
the grant of one broad enough to cover his 
invention. 

At this juncture the writer feels that it will 
be well to proceed to a general review of the 
laws governing the practice of patent law. 



CHAPTER II. 

THE ORIGIN AND EVOLUTION OF AND 

A GENERAL REVIEW OF THE LAWS 

GOVERNING THE GRANTING 

OF PATENTS. 

1. Origin of Patents. 2. Abuse of Special Privileges. 3. 
Henrj III and His ^ ^ Easterlings. ' ' 4. Henry IV and 
Queen Elizabeth Grants. 5. Patent Monopoly Case, Darcy 
vs. Allin, year 1602. 6. Belief by Statute of Monopolies, 
year 1623. 7. Present Patent Laws. 8. Rights of Inventor. 
9. Patent Interpretation. 10. Bell Telephone Case. 11. Per- 
fection no Requisite to Obtain Patent. 12. Edison's In- 
candescent Lamp Case. 13. Patentability. 14. Classes of 
Inventions and Respective Definitions. 15. Process and Machine 
Patents. 16. Manufacture and Construction Patents. 17. 
''Composition of Matter'' Patents. 18. Design Patents. 
19. Reissue Patents. 20. ''Disclaimer" Protection. 21. 
Assignment. 22. Patent as Personal Property. 23. Mark- 
ing Patented Articles. 

Before further discussing the question of 
patents, it will be found interesting to re- 
view briefly the origin of and the several 
causes leading up to the legislation from 
which the present-day practise in regard to 
the granting of patents has been evolved. 

What is known as the "common law" en- 
tered into the matter only in the most inci- 
dental way, either in England or America, 
prior to such time when enactments of a leg- 
islative nature were applied to patents for in- 

28 



ORIGIN AND EVOLUTION 29 

vention. Property rights did not obtain at 
common law as far as discovery or invention 
were concerned. Beyond question, however, 
there did exist at common law the right by 
royal prerogative of the king to grant as 
suited his pleasure such protection to his sub- 
jects, at least for a prescribed time. Never- 
theless, previous to any such enactment no 
right of property existed under the common 
law, and without the exercise of this arbitrary 
power, vested in the crown, the inventor or 
discoverer enjoyed no rights to the exclusion 
of others in the product of his genius. Once 
he disclosed its existence, or the means of re- 
producing it, it then became public property, 
and his rights thereto never exceeded those of 
all others who wished to exploit it. With such 
power at the king's command, subject entirely 
to his personal whims and purposes, it is quite 
obvious that the opportunity for abuse of this 
power was great. Abused it was, and it would 
seem that this prerogative was seldom ex- 
erted for the public weal. 

Favorites at court and greed of gold seemed 
to be the chief incentives in the granting of 
these special privileges, and the abuses in- 
creased in proportion to the moral fibre of the 
reigning monarch and those who enjoyed his 
favor. In the hands of an unscrupulous ruler 
it supplied a most ready means of obtaining 



30 PATENTING AND PROMOTING 

revenue to defray profligate expenditures at 
court. When used for such purposes it nat- 
urally caused paralysis of trade and brought 
about commercial decay. It was not un- 
common for the affixing of the seal of royal 
approval upon a bit of parchment to spell com- 
plete ruin to some shop or manufactory repre- 
senting not only large capital, but years of 
toil and sacrifice. 

From the reign of Henry III to that of Ed- 
ward VI almost the entire control of Eng- 
land's commerce was in the hands of for- 
eigners, mostly men from the Hanse towns. 
Henry IIFs love of these ^'Easterlings/' as 
they were called, was notorious. To them he 
had granted special privileges and formed a 
corporation in order to induce them to settle 
in London. During these three centuries they 
were maintained and protected by the crown 
to the exclusion and detriment of the English 
citizens. 

With the beginning of the reign of Edward 
VI (1551), relief came, and these privileges 
were greatly restricted. Then for a time the 
industries of England began to thrive in the 
hands of her own citizens. Slowly, however, 
other abuses equally as bad and as injurious 
to trade began to make themselves manifest. 
The royal prerogative was given or bartered 
for mercenary consideration, and the bulk of 



ORIGIN AND EVOLUTION 31 

the trade of London and of England again 
became absorbed by the few. 

Under Elizabeth this pernicious practice 
reached its high-water mark. The very neces- 
sities of life were controlled under royal grant 
by a chosen few of her favorites. Salt rose 
from sixteen pence to fourteen shillings the 
bushel, while other staples soared likewise 
through the grafting activities of this favored 
coterie of monopolists. Along with their ar- 
bitrary power came the right to violate per- 
sonal liberty to the point of searching stores 
and private property to hunt for such com- 
modities as would infringe upon their unfair 
advantage. 

If we but pause and contemplate the past, 
we shall often discover, to our confusion 
and chagrin, that we of to-day are in many 
ways only feeble imitators of the virtues and 
vices of our illustrious forebears. We rail 
against corporate greed and the trusts, while 
we have only to read history to discover that 
present-day methods suffer by comparison 
when placed beside those employed by these 
distinguished trade buccaneers of 1600. We 
find that, even after James I had endeavored 
to help matters by rescinding the rights of 
monopoly by grant, a group of London mer- 
chants formed a gigantic trust for the con- 



32 PATENTING AND PROMOTING 

trol of foreign trade, and succeeded in rais- 
ing and lowering the price of imports at will. 

Before Parliament took steps to correct the 
situation arising from these many abuses of 
the royal prerogative, private individuals car- 
ried the question of their rights before the 
court of the King's Bench in the form of in- 
fringement suits. It will be interesting in 
this connection to cite the case of Darcy vs. 
Allin (1602), where the patent of monopoly 
was defeated and the validity of the letters- 
patent was denied. 

In the thirteenth year of her reign, Queen 
Elizabeth granted to one Ralph Bowes the ex- 
clusive privilege of making, importing or sell- 
ing playing cards, for the period of twelve 
years, which was subsequently extended to 
the plaintiff, Darcy, an assignee of Bowes. 
Darcy brought suit against Allin to restrain 
him from manufacturing playing cards. It 
was not contended that Bowes had invented 
playing cards. It was contended that under 
the grant made to him, by virtue of the 
Queen's prerogative, he had the exclusive 
monopoly of the trade for the period men- 
tioned. In other words, it was not contended 
that Bowes had conceived anything, or that 
he had discovered or invented anything which 
had not been known before. Neither was it 
contended that the king had not the right to 



ORIGIN AND EVOLUTION 33 

grant exclusive privileges for limited periods 
of time, where the grantee, by his own charge 
and industry, wit or invention, introduced any 
new trade into the realm, or any engine that 
was never used before, and tending to the fur- 
therance of the trade, and for the good of the 
realm. In such cases, the king had the undis- 
puted right to grant a monopoly patent for a 
reasonable time, as consideration for the 
benefit the grantee brought to the common- 
wealth; otherwise not. 

In this case the defendant denied the right 
of the crown to make such an exclusive grant, 
and contended substantially that the liberties 
of the subjects in this regard were maintained 
to them by the Magna Charta. 

The question of prior knowledge or use was 
discussed, and it was contended that even 
where letters-patent had been granted by the 
sovereign for alleged inventions, they were 
invalidated where it could be shown that the 
particular article protected had been known 
or used within the kingdom before. In sup- 
port of this the case was cited where a monop- 
oly was granted for knives with bone hafts 
and plates of lattin, to a Mr. Matthey of Fleet- 
bridge, he being alleged to have brought the 
same from "beyond the seas." Other knives 
of similar character were shown to have been 
in use in England prior to the introduction of 



34 PATENTING AND PROMOTING 

those in question, and the defendants were not 
restrained. 

The case of Darcy vs. AUin was decided in 
favor of the defendant, and the right of the 
sovereign to grant an exclusive monopoly for 
anything other than an invention or impor- 
tation previously not in use within the realm 
was denied. In 1603, at the beginning of the 
reign of James I, came the first real relief 
from the evil of monopolies, which culminated, 
in 1623, in the Statute against Monopolies, 
by which it was enacted that all monopolies 
were contrary to the laws of England, and 
were declared null and void. There was, 
however, embodied in this statute a wise 
exception (Section VI), and in the provisions 
therein contained will be found what might 
well be considered the true foundation of the 
laws which to-day govern the practice of pat- 
ents, both here and abroad. This section was 
as follows: "Provided also, that it be de- 
clared and enacted: That any declaration be- 
f orementioned shall not extend to any letters- 
patent or grants of privilege for the term of 
fourteen years, or under, hereafter to be 
made of the sole working or making of any 
manner of new manufacture within this 
realm, to the true and first inventor of such 
manufactures, which others, at the time of 
making such letters-patent and grant, shall 



OEIGIN AND EVOLUTION 35 

not use, so as also they be not contrary to the 
law nor mischievous to the State by raising 
prices of commodities at home or hurt of 
trade, or generally inconvenient; the said 
fourteen years to be accounted from the date 
of the first letters-patent or grant of such 
privilege hereafter to be made; but that the 
same shall be of such force as they should be, 
if this act had never been made, and of none 
other." 

We shall now consider the present laws 
which govern the granting of patents in the 
United States. 

In the sense of the old common law a pat- 
tent granted for a useful invention does not 
constitute a monopoly either under our laws 
or those of England. It is a grant upon the 
part of the Government to the author of such 
an invention of the exclusive right for a term 
of years of practising that invention. This 
grant is made by the public as consideration 
for the benefit to the public resulting from 
the invention. Such benefit accrues in two 
forms: by the practise of the invention under 
the patent; or the opportunity to practise it, 
which becomes the public^s right upon the ex- 
piration of the patent. 

The undisputed and moral right of the in- 
ventor to enjoy the exclusive rights to his in- 
vention for a limited period of time; and the 



36 PSITENTING AND PEOMOTING 

great incentives to invent; and the large bene- 
fits that come with such an incentive are 
fully recognized in most countries. The laws 
of the United States are the most liberal of 
all in this respect. It has been to a consider- 
able measure this liberality which has made 
this country preeminent in the world of in- 
vention. On the other hand, it is this very 
liberality, splendid though it is, which is to a 
large degree responsible for the unnecessary 
waste discussed in the opening chapter of this 
book. 

The rights of the inventor in the United 
States are based solely upon the power given 
to Congress by the Constitution of the United 
States and upon Federal legislation. This] 
Federal power, of course, comes from the 
powers and privileges which the States have 
conferred upon the National Government 
through the Constitution. 

Section 4886 of the revised statutes states 
that: 

^^Any person who has invented or discov- 
ered any new and useful art, machine, man- 
ufacture or composition of matter, or any new 
and useful improvement thereof, not known 
or used by others in this country, or not 
printed or described in any printed publica- 
tion in this or any foreign country, before his 
invention or discovery thereof, and not in pub- 



ORIGIN AND EVOLUTION 37 

lie use or on sale more than two years prior 
to his application, unless the same has proved 
to have been abandoned, may, upon payment 
of the fee required by law and other due pro- 
ceeding had, obtain a patent therefor." 

Embodied in this brief section is substan- 
tially the basic fabric of the patent law of 
the United States as it exists at the present 
time. Nevertheless, these lines are required to 
be interpreted and re-interpreted in nearly 
every suit in which the question of patent 
validity of an invention is involved. Further- 
more, each case rests upon its own merits or 
demerits, and there is no branch of litigation 
in which each individual case requires so in- 
dependent a view as that which concerns the 
question of patents. 

This section defines to a certainty who is 
entitled to a patent. It also defines those 
things which are subject to patents, but nu- 
merous cases rest upon a border line, which 
renders a just interpretation very difficult. It 
should be thoroughly understood that few 
patents can be said to be valid until their 
validity has been given the test of litigation. 
This brief section has been the subject of vol- 
umes of decisions, and will continue to be as 
long as any such statute exists. 

When a person has an invention for which 
he desires a patent, he must comply with 



38 PATENTING AND PROMOTING 

certain conditions laid down by statute. In- 
asmuch as the patent granted is of the nature 
of a reward for the introduction of a new 
manufacture, it is granted conditionally on 
the inventor's making a true and full dis- 
closure of his invention and the mode of per- 
forming it, so that men skilled in the partic- 
ular art may, without having to investigate 
or solve the problem of its difRculties, know 
how to carry it out for their own and the pub- 
lic's benefit after the expiration of seventeen 
years. For this reason the inventor must file 
at the Patent Ofiice a specification setting 
forth clearly what his invention is and the 
mode of performing it. When this is done, it 
is the duty of the Examiners in the Patent 
Office to thoroughly examine the prior art re- 
lating to the invention in question, and care- 
fully consider the claims of the application, 
and see that his claims do not cover inven- 
tions shown or described in prior patents, or 
devices or features which already are public 
property or the subject-matter of prior 
grants. In this way, the Government attempts 
to insure validity of the patent it may grant 
and, therefore, every patent issued is con- 
sidered prima facie as valid. It is practically 
impossible for the Patent Office to know all 
that has been done in a particular art and, 
occasionally, claims are granted which later 



ORIGIN AND EVOLUTION 39 

are found to be invalid in view of prior use, 
or prior patents or publications -not discov- 
ered or known to the Patent Office Examiner, 
If the validity of the patent is questioned, the 
matter is taken up and determined by the 
Federal Courts. The courts, as a rule, are 
fair in their consideration of the inventor's 
rights, and it is the general practice to hold a 
patent valid unless there is convincing proof 
to the contrary. 

It should be clearly recognized that just 
what constitutes patentable invention is far 
from being as easy of definition as the aver- 
age layman would suppose. It is true that 
Section 4886 is brief and explicit. It defines 
absolutely who is entitled to a patent. It also 
defines absolutely those things which are sub- 
jects of patents. That these two points are 
clear, no court in the United States may ques- 
tion. It must be remembered, nevertheless, 
that courts interpret, and that the highest 
tribunal can not give a set or infallible rule 
governing doubtful cases. 

A border line, that intangible frontier of 
the patent world, exists as certainly as does 
the great Continental Divide. Upon this line 
many of the most valuable, and for this reason 
the most bitterly contested, patents rest se- 
cure, but this security only came as the result 
of judicial opinion. Thus far this line has de- 



40 PATENTING AND PROMOTING 

fied accurate definition. To know this ideal 
boundary is to know what is and what is not 
patentable invention. 

When the authorities at the Patent Office 
at the time of an application for a patent are 
in doubt as to whether or not this line of de- 
marcation has been trespassed, they usually 
and rightfully bestow the benefit of such 
doubt upon the applicant, and allow the claim. 
If subsequently the courts are called upon to 
pass upon the validity of such a patent, and 
in their minds this doubt still exists, their 
decision will be influenced in great measure 
by the consideration as to whether or not the 
invention has proved to be commercially 
valuable and successful. The reason for this 
attitude is found in the assumption that for 
an invention to be successful commercially 
there must reside within the invention itself 
an inherent cause for such success. Take, for 
example, the renowned telephone cases, which 
illustrate this point, as does also the well- 
known litigation in connection with Edison's 
patent for the incandescent electric lamp. 
Parenthetically it might be stated that where 
it is plain that great public benefit will result 
from an invention, it requires very slight evi- 
dence of invention to secure a patent. To en- 
joy it is another matter. 

In the matter of the Bell telephone patents 



ORIGIN AND EVOLUTION 41 

we find that there was a mass of alleged an- 
ticipatory testimony submitted, some of it 
very convincing. The court also regarded 
some of the testimony with suspicion, but Bell 
had this great advantage. He had described 
a means, possible of successful operation, of 
transferring to an undulatory current of elec- 
tricity the vibrations of the speaking voice 
in such a manner that the articulate speech 
was conveyed to and received by a listener on 
the line of such a current. Here beyond ques- 
tion was one of the mighty inventions of the 
age. The public had never before been given 
such an invention, and it certainly would have 
required conclusive evidence of anticipation 
to have deprived Bell of his rights to his 
patent. 

Here is the fifth claim of the Bell patent: 
"A method of and apparatus for transmitting 
vocal or other sounds telephonically as herein 
described, by causing electrical undulations 
similar in form to the vibrations of the air 
accompanying the said vocal or other sounds, 
substantially as set forth.^' Upon this broad 
claim the Bell Company rested their entire 
case. 

At the time Bell applied for his patent, he 
had never really transmitted spoken words 
telephonically, so they could be understood 
distinctly at the receiving end of the line. 



42 PATENTING AND PROMOTING 

Neither had he given the public a commer- 
cially operative device, nor had he ever con- 
structed one himself. Nevertheless, in ren- 
dering the Court's decision, Chief Justice 
Waite said: "In his specifications he did de- 
scribe accurately, and with admirable clear- 
ness, his process; that is to say, the exact 
electrical condition that must be created to 
accomplish his purpose; and he also described, 
with sufficient precision to enable one of ordi- 
nary skill in such matters to make it, a form 
of apparatus which, if used in the way pointed 
out, would produce the required effect, receive 
the w^ords, carry them to and deliver them 
at the appointed place. The particular instru- 
ment which he had and which he used in his 
experiments did not, under the circumstances 
in which it was tried, reproduce the words 
spoken so they could be clearly understood, 
but the proof is abundant, and of the most 
convincing character, that other instruments, 
carefully constructed and made exactly in ac- 
cordance with the specifications, without any 
additions whatever, have operated and will 
operate successfully/' 

It is reasonably sure that prior to his ap- 
plication for a patent Bell had not been as 
successful in actual experiments as some 
others w^ho had experimented along these 
lines before him, but no one had reduced this 



OEIGIN AND EVOLUTION 43 

invention to practise, either on paper or in 
the form of a device, to the extent that Bell 
had brought it. 

The Court said, inter alia: "Some witnesses 
have testified that they were unable to do it 
(construct an apparatus from Bell's patent) ; 
this shows that they, with the particular ap- 
paratus which they had, and the skill they 
employed in its use, were not successful; not 
that others, with another apparatus, perhaps 
more carefully constructed or more skillfully 
applied, would necessarily fail. * * * 
When the question is whether a thing can be 
done or not, it is always easy to find persons 
ready to show how not to do ; if one succeeds, 
that is enough, no matter how many others 
fail. * * * The law does not require that 
a discoverer or inventor, in order to get a 
patent for a process, must have succeeded in 
bringing his art to the highest degree of per- 
fection. It is enough if he describes his meth- 
od with sufficient clearness and precision to 
enable those skilled in the matter to under- 
stand what the process is, and if he points 
out some practical way to put it in operation. 
This Bell did." 

It cannot fail to interest the reader if, in 
order to elucidate further the question under 
discussion, he is given a brief review of the 
case of the Edison Electric Light Company vs. 



44 PATENTING AND PEOMOTING 

The Columbia Incandescent Lamp Company, 
on motion for a preliminary injunction which 
was refused. It will be well to state at this 
point that in every suit in which Edison's pat- 
ent issued in 1880 for the incandescent elec- 
tric lamp has been at stake, his broad claims 
were ultimately sustained. 

The defense was based upon the following 
alleged facts: That a German, Henry Goebel 
by name, possessed of some knowledge of elec- 
tricity which he had acquired in Europe, had 
come to New York City, prior to 1854, and 
had opened a small shop in the lower part of 
the town. Here he pursued a sort of desultory 
trade in the repairing of watches, and also 
of telescopes and other optical instruments. 
It seems that while yet residing in his native 
land, the idea of producing light by means of 
passing an electric current through the med- 
ium of a film, rendered incandescent in a 
vacuum globe, had been suggested to him. 
After he came to this country he employed 
his odd moments in working out this idea, and 
succeeded in making, as early as 1854, films 
from strips of bamboo which he encased in 
air tight globes, and by connecting with a cur- 
rent, produced what was substantially an in- 
candescent light. His lamp, though crude and 
differing in form, was, in its fundamental f ea- 



ORIGIN AND EVOLUTION 45 

tures, much the same as those now in common 
use. 

Goebel exhibited his lamp in his shop win- 
dow as a curiosity to attract trade. It ap- 
pears that he also exhibited the device about 
the city in the evening, suspended beneath a 
telescope, which he set up in the public 
squares, charging a modest fee to those who 
wished to look at some wonder of the heavens. 

Some forty years elapsed before the world 
was to hear of GoebeFs effort. He then con- 
structed several of these lamps, using the 
same tools and materials, and caused the Edi- 
son Company not a little anxiety, for it was 
thought by some experienced patent experts 
at the time of the suit just cited that it was 
highly probable that Edison might be shorn 
of the honor of being the inventor of the in- 
candescent lamp. 

Section 4886 reads: "Any person who has 
invented or discovered any new and useful 
art, machine, manufacture or composition of 
matter, etc.'' is entitled to a patent This 
surely leaves no doubt that any one, be the 
inventor black or white, male or female, minor 
or adult, native or alien (provided of course 
that the other requirements of the law are 
complied with), enjoys the right to a patent. 
It does not say, on the other hand, what in- 
vention is. Primarily, this, the most difficult 



46 PATENTING AND PROMOTING 

of all questions in patent practise, is left to 
the Patent Office. Ultimately it is for the 
courts to decide. There never can be a fixed 
rule, and in border-line cases the court will 
take into consideration the success of the in- 
vention and its value to the public, and if pos- 
sible will resolve all doubts in favor of the 
inventor and the validity of the patent. It has 
been decided that for an invention to be en- 
titled to protection it must be the product of 
some exercise of the inventive faculties, and 
not simply the result of employing the con- 
structive faculties of the mind. Let the reader 
ponder over this distinction, and he will in a 
measure appreciate what often must be the 
problems that confront the inventor and the 
attorney who is called upon to prosecute his 
claims. 

The word ^^patentability" is one to conjure 
with. Its exact significance is something few 
inventors have been fortunate enough to es- 
cape. Nearly every case requires that it be 
approached from a different angle or point of 
view. 

Under Section 4886, patents are granted for 
four classes of inventions, viz : useful art, ma- 
chine, manufacture, and composition of mat- 
ter. To simplify a consideration of these, 
they may be further condensed into three 
classifications, viz: process patents, machine 



OEIGIN AND EVOLUTION 47 

patents, and product patents. In the patent 
law sense, an art is a method or process ; ma- 
chines form a distinct class, while manufac- 
ture may be resolved into one large class, and 
may be termed a product. 

In patent practice, and as interpreted by 
the courts, the word ^^art" has a restricted 
meaning. In the same way a process must be 
distinguished from a principle. A process can 
be patented — a principle can not. Therefore, 
in determining what is and what is not a pat- 
entable process very fine distinctions must be 
drawn if we are to keep within the contem- 
plation of the Act. The mere use or employ- 
ment of a particular element of nature to do 
or operate a particular thing would not in 
itself be a patentable process. In all cases the 
thing accomplished must come as the result 
of some exercise of the inventive faculties of 
the inventor or discoverer. The adaptation 
or use of an electric current for printing in- 
telligible characters at a distance was decided 
not to be a patentable process. This case 
(O'Reilly vs. Morse) is very celebrated, and 
the decision conveys this distinction very 
clearly in a negative sense. Chief Justice 
Taney, in his opinion on this case, remarked : 
"No one, we suppose, will maintain that 
Fulton could have taken out a patent for his 
invention for propelling vessels by steam, 



48 PATENTING AND PEOMOTING 

describing the process and machinery he 
used, and claimed under it the exclusive 
right to use the motive power of steam, 
however developed, for the purpose of pro- 
pelling vessels. ^ * * Neither could the 
man v/ho first discovered that steam might, 
by a proper arrangement of machinery, be 
used as motive power to grind corn or spin 
cotton, claim the right to the exclusive use of 
steam as a motive power for the purpose of 
producing such effects.'^ 

On the other hand, if some force of nature, 
known or unknown, is applied to a material 
or phj^sical object in a novel manner, and 
brings about heretofore unknown results, the 
inventive faculties have of a certainty been 
brought into play, and such a process would 
be subject of patent. It is not always essen- 
tial that the product obtained shall be a neiv 
product, provided the operation of the known 
force upon the physical object is new in the 
manner employed and described. The prac- 
tical application of a known force to a new 
object is a new art, and the practical applica- 
tion of a new or heretofore unapplied natural 
force is a patentable process. An art may re- 
quire one or more processes or machines in 
order to attain a certain result or manufac- 
ture. The term ^^machine" embraces every 
mechanical device, or combination of me- 



ORIGIN AND EVOLUTION 49 

chanical powers and devices, to perform some 
function and to produce a certain effect or 
result Where, however, the effect or result 
comes as a result of chemical action, by the 
operation or application of some natural ele- 
ment or power, or of one substance to an- 
other, such modes, methods or operations are 
termed "processes/^ 

Processes are usually discovered ; machines 
are invented. Such arts as vulcanizing, tan- 
ning, smelting, etc., are carried on by proc- 
esses as distinguished from machines. 

In contradistinction to the word ^^art,'^ in 
the patent law sense, the word ^^machine'^ car- 
ries with it a much broader meaning than is 
conveyed by the common acceptance of the 
term, and its definition is much less recondite 
than that of "process.^' What a machine is 
everyone can define. In the common accept- 
ance of the word, it is a device composed of 
one or more parts for performing mechanic- 
ally given operations. Patents are constantly 
being issued for improvements on machines 
in their most minute details. Whether the 
machines are new, or sufficiently novel over 
the prior art, or the improvements are novel 
and useful, and show true invention: these 
are the questions considered for the most part 
where machine constructions are concerned. 

To give some idea of how broad is the mean- 



50 PATENTING AND PROMOTING 

ing of "manufacture" in a patent sense, it will 
be found that under this class patents have 
been granted for the construction of houses 
and many major constructions of buildings. 
While almost as broad as its derivation im- 
plies, it must be remembered that it does not 
include machines or compositions of matter. 

Good examples of what is patented under 
the class of "composition of matter'' are sub- 
stitutes for leather, rubber, etc. A composi- 
tion of matter is generally a product obtained 
from the chemical action of its ingredients. 
It may, however, take the form of a product 
composed of various parts of matter mechan- 
ically united. To be patentable, it must in its 
entirety produce different results from the 
aggregate, independent results of the respec- 
tive ingredients ; that is to say, the ingredients 
in the combination must lose their individual- 
ity, and bring about different effects in the 
combination than they produce separately and 
as independent organisms. This class of pat- 
ents gives rise to much litigation and con- 
troversy. 

Design patents are provided for under the 
Revised Statutes in another section than 
those just reviewed. This section (4929) reads 
as follows: "Any person who has invented 
any new, original and ornamental design for 
an article of manufacture, not known or used 



OEIGIN AND EVOLUTION 51 

by others in this country before his invention 
thereof, and not patented or described in any 
printed publication in this or any foreign 
country before his invention thereof, or more 
than two years prior to his application, and 
not in public use or on sale in this country 
for more than two years prior to his applica- 
tion, unless the same is proved to have been 
abandoned, may, upon the payment of the fees 
required by law and other due proceedings 
had, the same as in cases of invention or dis- 
coveries covered by Section 4886, obtain a pat- 
ent therefor." The term for design patents 
may be for three years and six months, for 
seven years, or for fourteen years, as the ap- 
plicant may elect. Design patents receive 
their protection on account of their appear- 
ance and ornamental effect, and not on ac- 
count of any functional utility. The patenta- 
bility of designs is determined by a very dif- 
ferent method than that employed when the 
identity of a functional patent is to be de- 
termined. Their identity is determined by the 
effect on the eye of an ordinary observer ; the 
question being, Does the alleged new design 
appeal to the average observer as being dif- 
ferent from the design with which it is being 
compared? Expert comparative testimony is 
rejected. 
There are in patent practice what are 



52 PATENTING AND PROMOTING 

known as reissues. These are provided for 
under Section 4916 of the Statutes. 

^Whenever any patent is inoperative or in- 
valid, by reason of a defective or insufficient 
specification, or by reason of the patentee 
claiming as his own invention or discovery 
more than he had a right to claim as new, if 
the error has arisen by inadvertence, accident 
or mistake, and without any fraudulent or de- 
ceptive intention, the Commissioner shall, on 
the surrender of such patent and the payment 
of the duty required by law, cause a new pat- 
ent for the same invention, and in accordance 
with the corrected specification, to be issued. 

* * 5f5 M 

The defect may arise from the fact that 
the applicant claims too much, and wishes to 
file a more limited claim; on the other hand, 
he may not have claimed as much as the speci- 
fication would warrant. In many cases the 
invention is defectively described. In such 
cases the most expert advice is necessary, and 
delays are dangerous. 

The rights of an inventor are further pro- 
tected by what is known ^s a "disclaimer." 
(Section 4917). Where a patentee has claimed 
more than that of which he was the true in- 
ventor or discoverer, if the part is material, 
and the claim occurred by reason of inadvert- 
ence, accident or mistake, and without any 



ORIGIN AND EVOLUTION 53 

fraudulent or deceptive intention, he may file 
a disclaimer of such parts of the thing pat- 
ented as he shall not elect to claim, and his 
patent shall be valid for all that part which is 
justly his own. Such proceedings are gener- 
ally had either to avoid or enforce infringe- 
ment. The latter becomes necessary before 
damages can be recovered, for the reason that 
that part of a patent to which a disclaimer 
should be entered could not be infringed. 

Were no provisions made whereby a pat- 
entee could sell his patent, or grant licenses 
thereunder, his patent would be of little value 
to him, provided he did not wish to engage in 
the manufacturing business himself. Section 
4898 provides that every patent or any inter- 
est therein shall be assignable in law by an in- 
strument in writing and that a grant may be 
made covering the whole or any specified part 
of the United States. Great hardship and 
loss are likely to result, however, from the 
fact that three months^ time is allowed for 
the recording of the assignment. A much 
shorter time would be ample. Take for ex- 
ample: 

"A^^ executes an assignment to ^^B", in con- 
sideration for $10,000 paid upon the delivery of 
the deed. ^^B'^ has made a title search, which 
discloses no assignment of record. Within 
three months, ''C records an assignment 



54 PATENTING AND PROMOTING 

from ^^A" for the same patent, executed and 
delivered prior to the date of the deed to ^'B". 
^^A^' is as financially irresponsible as he is dis- 
honest, and ^^B" has lost $10,000, while ^^C'^ 
serenely holds title to the patent. Exceptions 
might be made, where a deed must come from 
abroad, but otherwise thirty days would seem 
ample to cover all legitimate contingencies. 
In all matters of assignments, trustworthy 
legal talent should be employed unless the pat- 
entee has had long experience in such matters. 
One should regard with extreme caution the 
man who advertises to execute assignments 
for the modest fee of five dollars. 

Patents are personal property, and form a 
portion of the patentee's estate. They cannot 
be attached and sold under common law^ pro- 
cedure, but are liable to a creditor's bill in 
equity, and if the judgment upon which the 
bill is based is not satisfied, the patent rights 
may be sold under the order of the court. 

Under existing laws, if an inventor, either 
from philanthropic, patriotic, or other motives, 
wishes to dedicate his invention to the public, 
he must bear the entire burden of the expense, 
including the usual fees and cost of develop- 
ment. Were this not the case, the Patent Of- 
fice might be flooded, especially in time of war, 
with worthless cases, to the detriment of the 
regular business. Of course many inventions, 



ORIGIN AND EVOLUTION SS 

some of them quite valuable, are unwillingly 
dedicated to the public through some bungling 
in the prosecution of the applications. 

The law requires that all patented articles 
be plainly stamped ^Tatented/^ and with the 
date that the patent or patents were granted. 
If like notice be placed on the package con- 
taining the article, or affixed in some manner 
to the article itself, so doing constitutes the 
same thing as actually stamping the article. 
Failure to comply with this regulation does 
not invalidate the patents, but no damages can 
be collected for infringement, provided the 
infringement is not persisted in after due 
notice has been given. Many articles are 
marked ^Tatented" after the patent which 
protected them has expired, and by so doing 
the manufacturer incurs no legal conse- 
quences, but so to label an article which in 
fact is not patented, constitutes a serious 
criminal act. 

In the following chapter will be given a gen- 
eral outline of the steps necessary to procure 
a patent for an invention. 



CHAPTER III. 

PROTECTING AN INVENTION OR DIS- 
COVERY BY PATENT. 

1. Patent Solicitor. 2. Copies of Patent. 3. Petition and Oath. 
4. Drawings. 5. Specifications. 6. Title of Application. 
7. Claims. 8. Division of Claims. 9. Board of ' * Examiners- 
in-Chief Appeal. 10. Commissioner of Patents Appeal. 11. 
Court of Appeals. 12. Fees. 13. Time of Applications in 
Patent Office. 14. Abandonment and Eevival of Applications. 
15. Forfeited Application. 16. Interference. 17. Limita- 
tions of a Patent Grant. 

The first thing for an inventor to do in 
order to secure a patent is to obtain the serv- 
ices of a reputable and capable patent solic- 
itor. Do not seek him through the advertis- 
ing columns. The man who is intelligent 
enough to invent does not seek his physician 
through that medium. Seek unprejudiced ad- 
vice from someone whom you think is in a po- 
sition to recommend the proper person. The 
number of inventors who are capable of prose- 
cuting their own cases is limited to the point 
of being negligible. This of course does not 
apply to such concerns as employ a regular 
staff of patent experts. The first thing such 
an attorney will ascertain is whether the in- 
ventor has made a careful study of the prior 
art, and he will then examine the data which 

56 



PROTECTING AN INVENTION 57 

have been procured. If he is not satisfied with 
the thoroughness of this investigation, he will 
have another careful search made from the 
files at the Patent Office. The imperative need 
of this preliminary investigation was fully 
covered in the opening chapter. 

The United States Patent Office leads the 
world, except, perhaps, Germany, as regards 
the thoroughness of examination into the nov- 
elty of an invention before allowing a patent. 
The files of the office are always available to 
the public. All printed matter, books, maga- 
zines, descriptions of foreign patents, and all 
references of every possible anticipatory na- 
ture are so arranged, under heads and sub- 
heads, as to make all references for a given 
case most accessible, if such exist. Copies of 
patents can be obtained from the Patent Of- 
fice for the nominal cost of 4*¥e cents each, 
and by availing himself of these, the inventor 
can have before him everything which has 
gone before along the lines on which he is 
working. Such an investigation, if carefully 
and intelligently conducted, will be equivalent 
to the search which will be made by the Pat- 
ent Office examiner to determine the patent- 
ability and novelty of the invention. 

The rules of practise are very clear as re- 
gards the subject of drawings, and the appli- 
cant's attorney will see that the drawings sub- 



58 PATEXTIXG AND PEOMOTIXG 

mitted are prepared by a competent drafts- 
man and that they comply as closely as pos- 
sible with these rules. If the inventor, with- 
out consulting an attorney, should have draw- 
ings made for this purpose, the draftsman 
should be informed of the use to which they 
are to be put. As models are no longer re- 
quired, or accepted, except at the specific 
request of the Patent Office, it is very impor- 
tant that the drawings be prepared in a man- 
ner which completely and clearly discloses the 
invention. The inventor should never allow 
his application to be filed until he has most 
critically examined a copy of the drawings 
illustrating his invention, and assured himself 
that they conform to his ideas, and that they 
bring out all the novel features of his device. 
Remember that a drawing can be read and 
interpreted in only one way, and that there 
have been cases involving the validity or scope 
of a patent which have been decided by the 
Supreme Court of the United States by what 
was shown in the drawings. Well executed 
drawings are also an important feature when 
capital is sought for an invention. 

The specification and claim or claims are 
the really vital and essentially important 
parts of the application. The latter consti- 
tute by far the most important part, for the 
patent is based upon the claims, which should 



PROTECTING AN INVENTION 59 

be carefully worded to define the applicant's 
invention, an example of which is contained 
in the specification and shown in the draw- 
ings. The scope of a claim may be modified 
by the wording of the specification, for the 
specification and drawings are considered in 
interpreting claims, but an applicant must 
never expect that his patent will cover any 
feature not included in the claims, no matter 
what is included in the drawings or specifica- 
tion. Neither can any new matter be incor- 
porated in a pending application. These are 
important points little understood by many 
inventors, but these and other matters of 
form can safely be left to the competent at- 
torney who will readily advise the inventor as 
to his best interests. There must be no inten- 
tional reservations or omissions in the speci- 
fications. Any such withholding of facts is 
in direct opposition to the spirit of the law 
which grants the inventor a monopoly for a 
term of years in order that the public may 
have the full benefit of the invention when 
such term expires. It is very necessary that 
the description be prepared with the greatest 
care, and that it be precise and explicit in 
every detail, so that anyone skilled in the art 
would be able to carry out the invention with- 
out difficulties. The reader will remember 
how important this was in the suit involving 



60 PATENTING AND PROMOTING 

the Bell telephone patent, and the remarks of 
the Court on the subject. Prolixity should 
be avoided. Strive for a "happy medium," 
and be sure that your ideas are fully covered. 
The better informed the inventor is on mat- 
ters pertaining to patent law the better he 
will be able to assist his attorney and to see 
that his interests are being properly cared 
for. The inventor should study his art from 
every possible angle. There are cases where 
lengthy specifications, including references 
from scientific journals or proceedings, are 
permissible. 

The writer should perhaps have mentioned 
the title, which in many cases is more import- 
ant than would be supposed. The title for a pat- 
ent should never be vague, but should convey 
a direct and suggestive significance. This in- 
sures it proper classification, and prevents 
much confusion for those who subsequently 
make searches with a view to purchases or in 
ascertaining the state of the prior art. Fre- 
quent changes are required by the Patent 
Office where titles do not properly describe, 
and there have been cases where patents have 
been entirely lost sight of for this very reason. 
It has been held that an applicant should be 
permitted to retain a title which he believes pe- 
culiarly fitting or desirable^ unless such title is 



PEOTECTING AN INVENTION 61 

in fact inaccurate^ or there is some other sub- 
stantial reason why he should not. 

The claim is the vital and pivotal wedge of 
the patent^ and the greatest care should be 
exercised in the preparation. The keenest 
and most expert skill is required to lay out 
properly the claims for a patent It requires 
even greater skill so to manipulate them with 
attention to the prior art and rules governing 
patentability that they may be allowed. It 
matters not how clearly the specification may 
state the novelty of the invention, the scope of 
the patent never exceeds what is set forth in 
the claims. Its commercial value is vested in 
the claim or claims and in those alone. In this 
fact lies the cause for thousands of worthless 
patents. It is a very simple matter to get a 
patent through the Patent Office, where per- 
haps only one claim out of the several em- 
bodied in the specification is allowed, and it 
is imagined by the inventor that his patent 
covers all that he sought. In many other cases 
the claims are so badly prepared that the in- 
ventor does n*ot get what he was entitled to, 
in some cases getting a very narrow patent 
where it was possible for him to have secured 
a very broad one. It must be remembered 
that the Patent Office examiner is the servant 
of the public and it is not his prerogative to 



62 PATENTING ANT) PROMOTING 

point out to the inventor how he can secure 
advantage over his client, the public. 

For this reason it is necessary to impress 
upon the inventor the value of bringing into 
the case the skilled attorney as soon as possi- 
ble. The inventor is almost sure to be with- 
out experience in the prosecution of patent 
applications, and without skill in drafting 
claims and determining the scope of claims 
with regard to references cited by the Patent 
Office. 

Claims should not be a complete description 
of the invention. The detailed specification is 
for that. They should embody only a concise 
and clear statement of the invention, covering 
every feature of the invention as far as pos- 
sible in view of the prior art. Proper prac- 
tise should be rigidly observed, and particular 
attention paid to possible infringement or 
equivalents. 

In many cases the question of division of 
claims is involved, and it must be borne in 
mind that two or more independent inventions 
cannot be claimed under one application. A 
careful avoidance of this mistake will mean a 
minimum of unnecessary expense and compli- 
cations with the Patent Office. Division, when 
the additional expense is not warranted, can 
always be avoided by anticipating it in the first 
instance. Of late years the Patent Office has 



PROTECTING AN INVENTION 63 

become very strict in the matter of division 
in certain classes. This makes the expense 
of fees very high for patents covering complex 
mechanisms, and fine discrimination is neces- 
sary to decide just what patents are absolutely 
required properly to protect the machine 
without needlessly adding to the cost. Never- 
theless, if the inventions are valuable, the 
broadest possible protection should be secured 
regardless of cost. 

It frequently happens that inventors keep 
constantly adding improvements to a certain 
machine, taking out additional patents when- 
ever possible to cover these features, event- 
ually getting a very complicated mechanism, 
often to a point that it might be termed "top- 
heavy.'' An expert analysis on the part of a 
skillful mechanical engineer might disclose a 
means to remodel the machine and reduce it to 
a very simple mechanism and yet embody all 
of the improvements which have been evolved 
and added to the original. The writer knows 
of a new motion picture camera which is des- 
tined to revolutionize motion picture pho- 
tography. In .this instance the inventor has 
produced a second model, embracing all the 
advantages of the original, and many addi- 
tional improvements, and yet has so simplified 
the whole that it can be manufactured at one- 
third the cost of the camera first designed. 



64 PATENTING AND PROMOTING 

If, as can easily be the case even with a care- 
fully considered and properly prepared appli- 
cation, the claims are rejected in whole or in 
part by the Examiner, the applicant is entitled 
to the following recourse. It is not uncommon 
for the examiners to be wrong in their de- 
cisions, and to reject claims to which the ap- 
plicant is actually entitled. It would be most 
unjust if such errors could not be adjusted, 
and for this reason the law wisely provides 
that where an applicant has had his claims 
twice rejected he may take his case to the 
Board of Examiners-in-Chief, a quasi-inde- 
pendent body, composed of three experts care- 
fully selected for their particular fitness for 
such duty. This Board, in the case of an ap- 
peal, will consider the entire record of the case 
as set forth in the notice of appeal and the 
Examiner's statement in reply to said notice. 
If in their judgment, and in view of their find- 
ings, they are convinced that the examiner 
has erred in his decision, they will reverse his 
decision, render a judgment in favor of the 
applicant, and allow the claims. The cost of 
such an appeal, irrespective of the attorney's 
fee, is ten dollars. 

If, however, the Board of Examiners-in- 
Chief renders an adverse decision, the appli- 
cant can then, upon payment of the Govern- 



PROTECTING AN INVENTION 65 

ment fee of twenty dollars, appeal his case to 
the Commissioner of Patents. 

From the decision of the Commissioner of 
Patents the applicant has one last appeal, and 
may have his case presented before the Court 
of Appeals of the District of Columbia, the 
highest tribunal to which the case may be car- 
ried- This involves a docket fee of fifteen 
dollars and the cost of printing the record. 

Regardless of the cost in Government fees 
the legal expenses connected with appeals are 
usually very heavy, and the inventor should 
exercise great caution before taking such 
action. It should first be determined whether 
the claims sought are really essential to the 
proper protection of the invention; then the 
relation of the claims to the prior art cited by 
the examiner, and on which the rejection is 
based, should be very thoroughly studied, to 
ascertain the chances of success. The reliable 
attorney will advise his client in these matters 
and frankly discuss with him every phase of 
the situation with a view to saving the client 
unnecessary expense. 

As a rule cases of abandonment are the re- 
sult of neglect or incapable prosecution. The 
law requires that cases must be completed and 
prepared for examination within one year 
from the date the petition is filed. By this it 
is not meant that the prosecution of a patent 



66 PATENTING AND PKOMOTING 

must be completed in one year, as we have 
mentioned cases which have been pending in 
the Patent Office for years. The law allows 
one year from the date of each action of the 
Patent Office in that particular case. It is 
best in most cases to take advantage of the 
full time allowed, as the term of the patent 
commences with the date of issue. There are 
many causes that can be the reason for these 
delays, such as litigation or other extenuating 
circumstances. 

By certain responsive actions, clever inven- 
tors and lawyers have succeeded in keeping 
applications pending in the Patent Office for 
years for the sole purpose of being eventually 
bought off, when an opportunity presents it- 
self to enter an interference. Patents which 
are pending are never open to the public for 
examination, and are therefore impossible to 
reckon with when an examination of the prior 
art is made. Of course, an expert investigator 
can often obtain valuable information con- 
cerning projected inventions, which would 
not be disclosed by the search made of the 
records of the Patent Office. In this respect, 
however, the inventor must take his chances, 
and he can never tell when an interference 
will be entered. The importance of carefully 
preparing for such a contingency was pointed 
out in Chapter One. 



PEOTBCTING AN INVENTION 67 

When an application becomes abandoned 
for any cause the applicant may have it re- 
vived if it can be clearly proven that the delay 
was beyond the control of the interested par- 
ties. 

The writer knows of a case where a situ- 
ation involving a fortune was completely 
saved, but only because of the fact that an 
application for a patent had been tied up in 
the Patent Office for twenty years on account 
of protracted litigation. The inventor had 
long since died without ever receiving an issue 
of his patent. Without a patent covering the 
claims incorporated in this dormant applica- 
tion, the rights to which were purchased from 
the estate of the inventor, the machine (a vot- 
ing machine) which was projected could never 
have been placed on the market, inasmuch as 
the all-important feature of the whole was 
anticipated by the acquired patent, which, had 
it been issued in due course, would have long 
since expired and been open to use to all who 
wished to apply its principle. The salvation 
of this project came as the direct result of an 
expert investigation instituted upon the re- 
quest of an interested individual approached 
for additional capital for development. 

A forfeited application differs from an 
abandoned application in that the issue is 
withheld solely for failure to pay the final 



68 PATENTING AND PROMOTING 

Government fee. After a patent has been al- 
lowed the applicant is granted six month's 
time in which to pay this fee. If this require- 
ment is not met within the allotted time the 
applicatiori becomes forfeited. The remedy 
comes in the form of a renewal, and the orig- 
inal fee for filing is forfeited and must be 
again paid. There is great danger in this, as 
forfeited or abandoned applications are not 
cited in reference, and should another make 
application, setting forth the same or similar 
claims, no notice of such application will be 
given to the party who first applied. 

The term ^Interf erence'^ is applied to a pro- 
ceeding instituted by the Patent Office to de- 
termine who is the true inventor, where two 
or more inventors make application for a pat- 
ent covering the same idea or ideas. If two or 
more applications are pending disclosing this 
condition of affairs, the Patent Office will on 
its own motion declare an interference. No- 
tices are then mailed to the applicants, and 
testimony must be taken bearing on the dates 
of conception, reduction to practise, etc., in 
stHct accordance with the prescribed rules 
governing such contests. The writer cited a 
typical interference case on page 19. Inter- 
ference cases have often been tainted with 
perjurous and trumped-up testimony, and 
are at best a most expensive and exasper- 



PROTECTING AN INVENTION 69 

ating proceeding. They must be argued by 
counsel and the merits of the case are decided 
by the Patent Office on the testimony submit- 
ted. The Patent Office Tribunals hearing 
these cases endeavor to render fair and im- 
partial decisions on the evidence presented. 
It sometimes happens that the first inventor 
fails to establish his case because of lack of 
proper evidence to legally establish his dates, 
and sometimes an inexperienced attorney 
fails to handle the case properly. It fre- 
quently pays to settle the case between the 
parties and buy out the other party. If this 
is done, concessions should be filed such that 
the real first inventor obtains the interfering 
claims, otherwise if the patent ever gets into 
court a fraud may appear and invalidate the 
patent. If an application is rejected upon ref- 
erence to a patent issued less than two years 
prior to said application, the applicant can 
enter an interference by filing a request to- 
gether with an affidavit that he had reduced 
the invention to practise prior to the filing of 
the patent. 

Inventors seldom realize the limitations of 
a patent grant or the many setbacks they may 
encounter after they have received an issue. 
The general impression seems to be that with 
the possession of a patent comes a complete 
and unquestionable license for the exclusive 



70 PATENTING AND PROMOTING 

prosecution of the inventor's conception of his 
invention, irrespective of the claims secured. 
Such an idealistic state of affairs seldom or 
never exists in practice. 

The Patent Office Examiners endeavor in 
their examination of the art to cite all refer- 
ences pertinent to the invention under con- 
sideration. They are not infallible, however, 
and the classification of patents in the Patent 
Office files is not perfect, therefore, it occa- 
sionally happens that a patent is allowed to 
issue with claims to which the inventor is not 
entitled. It frequently happens that to manu- 
facture under a patent of this character 
means a serious infringement of some other 
patent. It is, therefore, of vital importance 
to the patentee, and more particularly to the 
capitalist and backers of the patent, that they 
should employ a competent attorney and ex- 
pert to supplement the Patent Office exam- 
ination and thoroughly investigate the prior 
art by an independent search to determine 
the validity of the claims in question. 

As has been clearly stated before, the 
matter of validity can be settled only by the 
courts. There are great disadvantages in 
this, and evils that arise therefrom might in a 
great measure be corrected by wise legisla- 
tion. Under the present system of patent law 
practise, the inventor is put on the defensive, 



PROTECTING AN INVENTION 71 

a situation which would be impossible under a 
system embodying the main principles of the 
German system in this regard. Many an in- 
ventor has forfeited his rights, or parted with 
them for a pittance, simply because he was 
unable to stand the financial burden placed 
upon him by protracted litigation. It has been 
conclusively proven that patents have com- 
paratively little value unless they have been 
passed upon by the highest of patent talent 
(involving large fees) or until they have run 
the gamut of the courts, which is after all the 
only true test of their worth. [ This is rapidly 
becoming the point of view of the modern 
business or moneyed man. Thus the existing 
patent laws introduce inventors to difficulties 
which often accompany them through life, not 
infrequently blighting their lives and robbing 
them of their better attributes. 

All the foregoing serves to emphasize the 
fact that there is no phase of industrial activ- 
ity where the services of capable and conscien- 
tious specialists are so requisite as in the de- 
velopment of new inventions, and none in 
which the public is more entitled to legislative 
reform in order that men with original ideas 
shall be fully protected and encouraged. 



CHAPTER IV. 
FOREIGN PATENTS. 

1. Foreign Eight Promotion. 2. Indiscriminate Patents 
Abroad. 3. Business Abroad. 4. Life of Patent Grants. 
5. Eules for Foreign Applications. 6. International Con- 
vention Governing Patents. 7. Examination of Inventions 
in Different Countries. 8. Value of Protection. 9. Trade 
Mark Eegistration. 

The reader should now have gleaned from 
the pages of the foregoing chapters the neces- 
sary understanding of the laws which govern 
patent practise in the United States. He has 
seen how, despite their apparent simplicity 
and liberality, many an inventor has found 
that they have only enticed him into difficul- 
ties. The writer now wishes to voice a note of 
warning with regard to applying for foreign 
patents. Few inventors are aware of the many 
requirements they must stand ready to meet, 
if they wish to enjoy benefits from obtaining 
patents abroad. 

When the United States Patent Office 
grants a patent for an invention, as far as the 
Government is concerned the last dollar of 
costs has been paid. The owner thereof may, 
or may not, as the case may be, enjoy his full 
rights thereunder for the full period of its 

72 



FOREIGN PATENTS 73 

term, seventeen years. He may work it, as- 
sign it, accept royalties on it, or allow it to 
remain idle, as he disposes. He will never be 
called upon, unless new legislation is enacted, 
to pay a cent of taxes of any kind for his 
privilege. He has only to champion its valid- 
ity or defend it against infringement. 

With that first flush of enthusiasm born of 
achievement an inventor is apt to cajole him- 
self into the belief that his accomplishments 
are to set the entire world agog, and he will 
hasten to obtain patents in every country 
where patents are issued, without the slight- 
est consideration of the advisability of so do- 
ing. He naturally enough assumes that the 
first cost is the only cost, as he found to be 
the case at home, and only too frequently the 
unscrupulous attorney does not find it to his 
own interest to disabuse his mind. ''Where 
ignorance is bliss, 'tis money in my purse," is 
his legal motto, if we may be pardoned for 
taking liberties with the adage. On the other 
hand, the reliable attorney will tell him that 
in most countries he will have an annual tax 
to pay, in the majority of instances increasing 
in amount each year, in default of which his 
patent becomes forfeited. He will be told 
that in most of the foreign countries the pat- 
entee is required to work his patent (actually 
manufacture within the realm) within a pre- 



74 PATENTING AND PROMOTING 

scribed time, usually three years. Such infor- 
mation might chill the enthusiasm of his cli- 
ent for foreign patents, but the conscientious 
attorney will always consider the best inter- 
ests of his client and advise him against un- 
necessary expense. 

It would seem quite logical to suppose that 
if an invention is worthy of patenting in one 
country, it would therefore be a good subject 
for patent wherever there may be found a 
ready market. This is in some measure true, 
but the existence of these markets and the 
peculiar conditions which surround them must 
be given most deliberate consideration and 
determined on scientific principles. 

It is a common occurrence for patents to be 
taken out in all countries having a certain 
minimum population, quite regardless of the 
suitability of the device to these particular 
countries. To take out patents on an inven- 
tion which has to deal only with mining, in a 
country which does not engage in mining, is 
obviously as absurd as to patent some expen- 
sive luxury in a country the poverty or fru- 
gality of whose inhabitants is well known. 
Nevertheless just such things occur. In the 
promotion of companies to handle the for- 
eign rights of an invention, these rights are 
valued in many instances solely on the basis 
of population, an arrangement which causes 



FOEEIGN PATENTS 75 

the Russian rights to be estimated as ten times 
the value of the Dutch rights, while as a mat- 
ter of fact there might be a most limited or 
no demand for the article in Russia, while 
Holland might afford an exceptionally fine 
market for just that particular thing. 

In order to ascertain what foreign patents 
should be taken out, the inventor or those who 
represent his interests should consult with 
some firm of unquestioned standing that has 
specialized in exploiting patents abroad. There 
are such firms, most of them with a network 
of foreign connections affording them especial 
facilities for determining the suitability of 
the invention to the several countries. The 
infinite number of factors entering into such 
findings are quite beyond the grasp of the 
ordinary inventor. There might be a big de- 
mand for an article in some particular coun- 
try, but conditions there might be peculiar 
unto themselves, so that no manufacturer on 
the ground would purchase the patent or even 
work it on a royalty basis. Absence of the 
proper kind of labor would be a good reason, 
or the industry might perhaps be so divided 
that there would be no concern large enough 
to handle it successfully. There might be a 
host of local reasons standing in the way. 
Under such conditions it would be a wanton 



76 PATENTING AND PEOMOTING 

waste of money to apply for patents in such a 
country. 

Let us, on the other hand, take for granted 
that there does exist a good market for some 
patented invention in certain foreign coun- 
tries. This being the case there are questions 
that the inventor should put to himself: Am 
I, or are my backers, in a financial position to 
establish factories abroad, advertise, and or- 
ganize a selling force? If not, are there for- 
eign firms who will purchase my rights, and 
if so am I equipped to negotiate with such 
firms successfully? If the inventor cannot 
answer these questions satisfactorily, without 
attempting to deceive himself or those inter- 
ested, he had better leave the foreign field 
alone, and endeavor to dispose of his rights to 
a well established concern that has the neces- 
sary capital and other facihties for making 
a success of the business. Not the least of 
these facilities is a thorough knowledge of the 
business methods of each particular country. 

As a general rule it will be found that the 
expense of equipping a foreign plant and of 
creating an organization abroad is so great 
that, if not actually prohibitive, it still will not 
yield adequate returns on the investment. It 
is usually only the large corporations, such as 
the General Electric, Westinghouse, Ford, 
American Radiator, Eastman Kodak, etc., 



FOREIGN PATENTS 77 

that have enough capital and talent to work 
the foreign field to advantage. 

Should the inventor decide, however, not 
to dispose of his patents to a concern in his 
own country, the wisest course for him to pur- 
sue would be to intrust his foreign negotia- 
tions to some firm of recognized standing 
that makes a specialty of handling such prop- 
ositions. Concerns of this character usually 
maintain offices in various foreign countries, 
and before attempting to sell a patent, or place 
it on royalty, will have practical demonstra- 
tions conducted for the benefit of the possible 
customer, to prove the worth of the invention 
and its adaptability to their needs. Another 
advantage in employing such a concern lies in 
the fact that they, having a reputation abroad 
based on past transactions, will command the 
confidence of their clients in a way an un- 
known American inventor could not. The 
greatest care should be exercised, however, in 
the selection of such a firm, because once 
chosen its members must be entrusted with 
information of a most confidential nature and 
given a free rein in the arrangement of terms. 
Beware of the man who informs you that the 
Europeans are always on the qui vive for any 
American invention that looks at all promis- 
ing. It has not infrequently happened that 
an inventor by indiscriminately securing pat- 



78 PATEXTIXG AND PEOMOTIXG 

ents abroad has so crippled himself financially 
as to be unable to put his invention on the 
market at home. 

The f ollo\dng case which came to the atten- 
tion of the writer is pathetic almost to the 
point of being humorous, although the unfor- 
tunate man who played the title role must in- 
deed be an optimist if he ever sees more than 
the bitter side. 

A certain inventor, possessed of very lim- 
ited means, had conceived a complicated but 
meritorious device ha\ing to do with automo- 
biles. His device was good, worked perfectly, 
and although it was in the nature of a luxury, 
still it should have had a futm^e if a proper 
plant could have been equipped for its com- 
mercial manufacture. Instead of conseiwing 
his resources to place himself in a position 
to raise the funds required for this purpose 
after obtaining his United States patent, this 
credulous man was led to believe by his attor- 
ney that the automobile owners of Europe 
were nervously waiting his invention, and 
would never rest in peace until their cars were 
equipped with his device. What he did not 
lead him to believe was that under the laws 
of the various countries he would be compelled 
to pay an annual tax or forfeit his rights. 
Neither did he inform him about their requir- 
ing him to manufacture within their midst 



FOEEIGN PATENTS 79 

The law says nothing about the necessity of 
a lawyer's so enlightening a client, so why 
should he be annoyed by such formalities? 
We have mentioned his kind earlier in this 
chapter, and will discuss him in extenso in the 
next. 

There are about seventy-five countries issu- 
ing patents, and our inventor tried to miss as 
few as possible. The more important coun- 
tries in which he took out patents will suffice 
for illustration, namely: Canada, Great 
Britain, France, Belgium, Germany, Austria, 
Italy and Russia. It might be well to mention 
Guatemala, for it figures in the end of the 
story. The total cost of securing his patents 
caused a marked shrinking in his bank ac- 
count, but they were a handsome lot of docu- 
ments and he considered them well worth the 
cost. Now that he had, as he supposed, made 
himself secure in these various countries, he 
felt that there need be no hurry as to when he 
should elect to begin equipping their motors. 
He was not to enjoy his contentment on this 
score for long, for the various countries 
seemed to feel differently about it. Much to 
his surprise he received a notice at the end of 
the first year that unless a tax of $23.00 was 
paid on his French patent, the same would be 
forfeited, and that in such an event he had 
paid out his good money only to show the 



80 PATENTING AND PROMOTING 

French people how to make his device. He 
further found that he would have to keep on 
paying taxes for the entire fourteen years 
allowed under the French grant, making a 
total of $322, regardless of first cost. Worse 
still, he must begin manufacturing in France 
before another year rolled around. 

^^Strange,^' he thought, ^^my attorney said 
nothing to me about this. I had better inves- 
tigate the laws of the many other countries 
where I have patents.^' 

It occurred to him for the first time that 
this would have been the proper thing for him 
to do at the very beginning. He was not long 
in finding out that other countries, not wish- 
ing perhaps to be outdone in politeness by the 
French, had very similar laws, in some in- 
stances much more expensive. The total 
taxes he v/ould have to pay in Germany, Aus- 
tria and Russia alone amounted to $2,439. He 
had not figured on equipping factories all over 
the world to satisfy the requirements of the 
different governments. Yet this was what 
he must do, or surrender his rights. In the 
meantime things were not going well with him 
at home. His invention had not created the 
furore that he had expected. Having spent 
all his ready money, this unfortunate inven- 
tor mortgaged his real estate, borrowed to the 
extent of his credit, disposed of his furniture 



FOEEIGN PATENTS 81 

and finally the roof over his head. When 
heard of last he was trying to sell his Guate- 
malan rights at what he considered a sacrifice 
to raise enough money to prove that he had 
something worth selling in the form of an in- 
vention. And regardless of all this, the motor 
cars purr noiselessly around the globe without 
any apparent need for his device. 

There are, of course, many instances where 
foreign patents are most important. To the 
larger modern manufacturers a group of for- 
eign patents is quite essential to insure a 
profitable business abroad, and this feature is 
particularly valuable when trade conditions 
are poor at home. There have also been in- 
stances where an inventor, not being able to 
get the serious attention of the American 
manufacturer, has been compelled to seek rec- 
ognition abroad and has been very successful 
there. Nevertheless, except in rare cases, the 
opportunities for the inventor are greatest in 
the United States, and in the opinion of most 
successful manufacturers, the better policy is 
to expend the money required for foreign 
patents and the equipping of factories on de- 
veloping the industry here, and to depend 
upon whatever export business can be pro- 
cured. 

Throughout the civilized world the grant of 
a patent is the only form of monopoly which 



82 PATENTING AND PEOMOTING 

has the sanction of the law and of public 
opinion. In order, however, that the public 
should not be deprived of the benefits of a 
natural progress in the arts and sciences, the 
terms of these special privileges are limited to 
a period of years, after which the public is 
entitled to the free use of such inventions or 
discoveries. 

In the United States the period allowed is 
seventeen years; in Canada, eighteen; in 
Great Britain and Australia, fourteen; in 
Germany, Austria, Switzerland, France, Por- 
tugal, Italy, Russia, Japan, Norway, Sweden, 
Denmark, Argentina, Brazil, and many other 
countries, fifteen; in Spain, Belgium and Mex- 
ico, twenty years. It would appear that the 
longest term is allowed by Colombia, where a 
patent at the discretion of the Government 
may be granted for fifty years. The shortest 
term allowed by any country obtains in Uru- 
guay: nine years. 

Novelty is, of course, the fundamental re- 
quirement of patentability in all countries. It 
must also be "useful.'^ What constitutes pat- 
entability according to the standards of the 
United States patent laws has been discussed 
at length, but in the various foreign countries 
it will be found that the respective patent 
offices have widely divergent views as to just 
what constitutes a ^^new'^ invention or discov- 



FOREIGN PATENTS 83 

ery. This point is of great importance to in- 
ventors who contemplate foreign patents. In 
some instances ''new'' means that the device 
or process has never been 'Vorked'' in the 
country in question; in others that it has 
never been published in the country. The 
status of the invention in other countries has 
no bearing in such instances. The most com- 
mon test is whether or not there is sufficient 
disclosure to enable an expert to manufacture 
from such publication. 

On the other hand, in certain countries the 
ruling is that if an invention has been worked 
or written about in another country — and this 
includes even the official patent publications — 
it shall be denied patent protection. For 
this reason, the American inventor who 
wishes to obtain patents in such countries, 
must apply for same simultaneously with his 
United States patent* 

Most foreign countries, however, are more 
liberal in this regard, and extend to the in- 
ventor a specified length of time after the 
issue of a patent in his own country, in which 



* Th^ reader will now see the si^ificance of the 
reference on page 27, pointing out the fact that a 
narrow patent issued in the United States, although 
possibly correct here, will be a fatal bar to a broad 
patent in a country such as cited. 



84 PATENTING AND PROMOTING 

to apply for a foreign grant. A certain few 
have special rules governing patents of im- 
portation, and in some instances, in fact gen- 
erally, the life of a patent expires concur- 
rently with expiration of the home patent. 

An International Convention for the Pro- 
tection of Industrial Property now exists, of 
which convention the United States is a mem- 
ber, together with the following countries: 
Great Britain, France, Belgium, Italy, Japan, 
Hungary, Holland, Denmark, Brazil, Norway, 
Mexico, New Zealand, Portugal, Greece, 
Spain, Servia, Santo Domingo, Sweden, 
Switzerland, Cuba, Australia, Austria, Ger- 
many, and a number of European colonies and 
dependencies. 

Under this convention, the first application 
for a patent in any of the subscribing coun- 
tries gives to the applicant protection for 
twelve riionths from the date of the applica- 
tion in all countries of the Union. In some 
of the countries, however, which have sub- 
scribed to the Convention, if anyone manu- 
factures the product prior to the filing of the 
application, he may continue to do so without 
paying any royalties to the patentee, even 
after his patent is secured. The patentee, 
whose patent is granted under this Inter- 
national Convention is given three years from 
the date of application in which to begin to 



FOREIGN PATENTS 85 

^Vork^' the invention, regardless of whatever 
the local law is in this respect 

In most highly developed industrial coun- 
tries the examination system is used, in vary- 
ing degrees similar to that of the United 
States Patent Office. France is quite a notable 
exception, as no attempt is made to examine 
into the merits of an invention. This is also 
true of most minor countries, where little in- 
dustrial development exists. In one or more 
Latin-American countries the action of the 
Government is entirely arbitrary in the mat- 
ter of granting patents, the term of the grant, 
and the amount of fees and taxes demanded. 
Even greater care is necessary in the selection 
of an attorney for the prosecution of foreign 
patents than in the United States, as what 
constitutes a well drawn claim in one country 
may be of no value whatever in another. 

The value of the protection which should 
come with a patent varies with the country of 
issuance. In a few countries a patent affords 
very complete protection, particularly in Ger- 
many, where it is guaranteed by the Govern- 
ment until a successful suit is brought against 
the Patent Office for annulment. In many 
others, including the United States and Great 
Britain, the Government refuses to guarantee 
anything in a patent, and merely gives the 
patentee the exclusive right to the use of his 



86 PATENTING AND PROMOTINa 

invention for a period of years, but leaves it 
entirely to the inventor or patentee to protect 
his rights. There are undoubtedly existing 
to-day in this country scores of patents which 
would not hold water if suit were instituted 
against an infringer, who can present every 
manner of defense to discredit the validity of 
a patent. This is far from the case in Ger- 
many. Lack of novelty, unpatentability, or 
absence of proper description, is not a defense 
in an action for infringement, and after the 
expiration of five years a German patent is 
incontestable for any cause. An infringement 
constitutes a criminal act. If such a law ob- 
tained in the United States, it would soon put 
a stop to the operations of the professional 
infringer. 

In those countries which make no examin- 
ation — France for instance — the applicant 
takes out a patent entirely at his own risk as 
to whether it possesses any validity whatever 
or infringes a prior patent. 

In Great Britain and other European coun- 
tries foreigners who fail to work the patent 
issued in that country can, in the public inter- 
est, be compelled to grant a compulsory license 
or otherwise forfeit the patent. In most 
European countries the Government has the 
prerogative of purchase for use for Govern- 
mental purposes, chiefly military and naval. 



FOREIGN PATENTS 87 

Where this is done, or licenses are exacted, 
reasonable compensation is allowed. 

Trade Marks. 

The great importance of completely pro- 
tecting a business name by registering trade- 
marks covering it cannot possibly be overesti- 
mated. Without such protection a manufac- 
turer could not hope successfully to build up 
an export trade. Registration in the United 
States gives absolutely no protection abroad. 
It is quite a common practice to "pirate" and 
counterfeit American marks. For this rea- 
son registration should be made as soon as 
possible. Registration is granted to the first 
applicant in Germany, Sweden, Hungary, 
Portugal, Japan, and most of the Balkan 
countries. This is also the case in about one- 
half of the Latin- American countries, includ- 
ing Argentina, Chile and Uruguay. 

It is to be deplored that in many countries 
the laws do not always recognize the person 
who is morally entitled to a trademark. This 
permits any unscrupulous schemer, if he first 
registers a mark, to become the legal owner 
thereof, although he may never have manu- 
factured or sold the product which it covers. 
Thus manufacturers who have built up a repu- 
tation for a certain product to the extent that 
it is internationally known by a certain trade 



88 PATENTING AND PROMOTING 

name, have, when they have sought a foreign 
market for their goods or device, discovered 
that their mark has been pirated, and find 
themselves placed in the position of being in- 
fringers and lawbreakers. Although such a 
condition of affairs would hardly seem possible 
in any civilized community, yet this very thing 
has happened again and again, and the right- 
ful owner must either compromise and sub- 
mit to such blackmail, or relinquish his rights, 
as far as that particular country is concerned, 
to the name which he has created. Mexico 
has been particularly distinguished for en- 
couraging this form of commercial brigand- 
age. 

The writer has touched but briefly upon the 
subject of trademarks, but wishes particu- 
larly to emphasize the importance of the man- 
ufacturer or inventor fully acquainting him- 
self with the various laws of foreign countries 
in this respect. 



CHAPTER V. 
PATENT ATTORNEYS. 

1. Credulity of Inventors. 2. Eesponsibility of Preparing 
Patent Applications. 3. Qualification of Patent Attorney. 
4. Advertising Patent Attorneys. 5. Reliable Patent At- 
torneys. 

To an extremely large number of would-be 
inventors the mere word ^^patent'^ has a magi- 
cal sound. To them the word spells "open 
sesame/' and a patent is an Aladdin's lamp to 
light their way to palaces of untold wealth. 
They actually regard the possession of such 
an imposing document in the light of a di- 
ploma from the Government, marking them 
off in strong contrast to the vulgar herd, much 
as the green turban of the Mohammedan who 
has made a pilgrimage to Mecca distinguishes 
him from his less fortunate brother. This 
really pathetic frame of mind is little to be 
wondered at if we will but peruse some of the 
alluring "dime novel'' literature distributed 
broadcast by a small army of advertising pat- 
ent solicitors. 

It would seem that there is no weakness 
peculiar or common to mankind which cannot 
be and is not profitably exploited by those 
adroit gentry who advertise to do almost any- 
thing from curing consumption in sixty days 

89 



90 PATENTING ANT) PROMOTING 

and obtaining divorces without publicity, to 
securing patent protection or money re- 
funded. Those who proffer these beneficent 
offices to the public are one and all actuated 
by the same purpose, the obtaining of "easy 
money'' from the credulous and gullible. Most 
of us are familiar with the late P. T. Barnum's 
classic observation apropos of this very cre- 
dulity, and the correctness of his judgment is 
confirmed by the millions of dollars which 
annually find their way into the coffers of the 
aforesaid gentry. It is this credulity which 
keeps the inventor poor, impedes the ma- 
chinery of the Patent Office, and fattens the 
purse of the unscrupulous and the advertising 
patent solicitors. 

. The laws dealing with the granting of pat- 
ents in the United States are so liberal that 
they permit any citizen or alien to prepare his 
own patent papers, quite irrespective of his 
ability or training for such work. For this 
reason many a valuable invention has been 
lost, and all its potential possibilities gone for 
naught through the attempt of an inexperi- 
enced man to prosecute his own patent claims. 
Above all other considerations the inventor 
should understand that the important thing is 
not merely to obtain a patent per se, but to 
secure one which will afford him real protec- 
tion. Such patents can rarely be obtained ex- 



PATENT ATTORNEYS 91 

cept by persons who have made a professional 
study of the patent question, and of wide ex- 
perience in patent practice. The work is at 
once technical, intricate and exceedingly diffi- 
cult, as the foregoing chapters should clearly 
indicate. Because of this it is found that there 
are a great number of men engaged in patent 
practice who are wholly unfitted to engage in 
this branch of the legal profession because 
they do not have sufficient technical education 
in mechanics and science, and lack the neces- 
sary skill and experience. Any lawyer in 
good standing can, regardless of his qualifica- 
tions, register, and engage in patent law, and 
any other person can become registered as a 
patent attorney, by presenting sufficient evi- 
dence to show that he can be of service to in- 
ventors in the prosecution of applications for 
patents. A certain proportion of these incom- 
petent attorneys are honest men, unconscious 
of or unwilling to admit their limited ability 
or knowledge. A far greater proportion is 
made up of individuals of varying degrees of 
scruple and conscience, who feel a much 
keener interest in their fees than in the wel- 
fare of their clients. The balance of the in- 
competents are absolute scoundrels who prey 
upon the unsuspecting until their crooked 
practices come to the attention of the authori- 
ties of the Patent Office and they are dis- 



92 PATENTING AND PROMOTING 

barred. Many of these legal wolves are still 
at large. There have been instances where 
such men have changed their names after be- 
ing disbarred from practice, in order that 
they might for a while longer continue their 
predatory careers. 

It would be impossible for the authorities 
at the Patent Office to keep themselves posted 
as to the characters of the thousands of men 
who have dealings with the Department. It 
is only when some flagrant misconduct is 
brought to their attention, such as an attorney 
filing applications for the same patent claims 
on behalf of more than one client at the same 
time, or similar nefarious practices, that they 
feel called upon to act. It must be understood 
that the routine work of the Patent Office is 
so enormous that it does not permit of any 
studied effort to safeguard the interests of 
those seeking patent protection, in so far as 
it relates to the selection of a patent attorney. 
Such surveillance does not come within the 
province of the office, and if the inventor does 
not conserve his own interests by the proper 
selection of his legal advisers, no one else will. 
The importance, therefore, of an inventor's 
making most careful inquiry into the qualifi- 
cations, both moral and technical, of the at- 
torney he retains is obviously vital. 
^ It is doubtful if there is any profession 



PATENT .ATTORNEYS 93 

where, apart from skill and knowledge, that 
element known as ^^moral hazard" plays such 
an important part as in the practise of patent 
law. The inexperienced inventor, when he 
seeks the services of a patent lawyer, should 
give careful attention to the following consid- 
erations : 

First — Integrity, 
Second — Proven Ability, 
Third — Experience, 
Fourth — Circumspection. 

The importance of the first consideration 
cannot possibly be underestimated, for to his 
attorney the inventor must disclose every de- 
tail in connection with his work. He becomes 
a confidential adviser in the deepest signifi- 
cance of the term. As regards the matter of 
ability, the inventor should ascertain from 
proper sources the past record of his solicitor 
in connection with other claims, and such in- 
formation will be readily available concerning 
any reputable attorney. It is hardly neces- 
sary to lay particular stress upon the value of 
experience as it plays the same part in every 
line of human endeavor. It will be well, how- 
ever, again to call attention to the wisdom of 
selecting an attorney who has had wide ex- 
perience along lines kindred to the invention 
under consideration. Circumspection is abso- 



94 PATENTING AND PROMOTING 

lutely essential. Inaccurate or slipshod meth- 
ods have no place in the proper investiga- 
tion of an art, or in the preparation of pat- 
ent applications; in fact there can be no cir- 
cumstances where the slightest inattention to 
details may be more fatal. Remember that 
the examiners at the Patent Office will not 
call attention to errors or omission, provided 
they do not trespass upon the rules of the 
office. Also remember that in the hands of an 
incompetent or dishonest solicitor the most 
meritorious invention may be rendered worth- 
less to the one who has conceived it. Ask a 
patent attorney of high standing, and he will 
tell you that the average patent issued to-day 
has little or no value to its owner, as the spe- 
cifications and claims are so poorly prepared. 
The inventors have simply paid out good 
money to show others of experience the prin- 
ciples of the inventions; having dedicated to 
the public all of those features of their inven- 
tions, not covered by proper claims, the bene- 
fits of which rightfully should have been en- 
joyed by the originators. 

Before entering into a detailed discussion 
of the activities of the advertising patent so- 
licitors, the writer begs to put the following 
questions to the reader : Have you ever known 
a surgeon, practitioner, or medical specialist 
of high standing, enjoying the respect of his 



PATENT ATTOENEYS 95 

eommunity and the profession, who has cre- 
ated this respect through the advertising col- 
umns? Have you not known of scores of 
undesirables who have depended upon this 
medium to obtain a livelihood? 

Such individuals are constantly being de- 
nied the use of the mails by the Federal 
authorities. So great have been these abuses 
that the intelligent public quite naturally re- 
gards with suspicion any professional man 
who resorts to newspaper advertising to se- 
cure clients. Such methods are hardly com- 
patible with real ability. The reader must 
now form his own conclusions. The analogy 
should certainly be apparent. 

There are patent solicitors who conduct 
their work on an ordinary quantity produc- 
tion basis. Such solicitors can not be consid- 
ered as giving value or dignity to this pro- 
fession, which is of such great need to the 
progress of our inventors and the industries 
for which the former are responsible. It is a 
known fact that what often appears to be a 
large organization of patent solicitors is the 
nest only of young under-paid clerks who fol- 
low a certain prescribed form of operation to 
manufacture patents. The boss, owner or 
leader of them is some man who emerged 
from the roseate field of adventurers, but not 



96 PATENTING AND PEOMOTING 

from the expert offices of our worthy patent 
solicitors. 

The following is typical of the form of ad- 
vertisement so often encountered in the classi- 
fied columns of many leading magazines and 
periodicals: 

Obtained or FEE re- 
PATENTS! turned. No charge 
FREE! for search as to 

patentability. 

Write for our three great books: 

''HOW TO INVENT AND WHAT 
TO INVENT," 

"HOW TO SECURE A PATENT," 

"FORTUNES IN PRIZES AWAIT 
INVENTORS." 

All free upon request. Send sketch 
or model. Our patent sales depart- 
ment gets full value for our clients. 

SWINDEL & MYTH, 
284 Caveat Bldg. Washington, D. C. 



PATENT ATTORNEYS 97 

Fortunes have been made out of a large por- 
tion of the unsuspecting public by just such 
advertising methods, supplemented by a sys- 
tem of follow-up letters, with no higher aim 
than to deceive trusting individuals and to 
filch from them ; and this is combined with an 
utter disregard for the quality of service they 
profess to render. Frequently the methods 
they employ barely come within the law, and 
cases are by no means rare where the criminal 
statutes have been actually violated. 

Let us analyze the advertisement used for 
the purpose of illustration. To start with, the 
offer of a free search is an absurd humbug on 
its face. Such service has a certain money 
value ranging from five to twenty dollars, ac- 
cording to the amount of work required. As 
a rule, five dollars should cover the expense of 
a preliminary examination and copies of pat- 
ents pertaining to the one under consider- 
ation. It is better to pay the reliable attorney 
a search fee of ten or twenty dollars, or more 
if necessary, with the assurance that he will 
devote a reasonable part of his valuable time 
to the consideration of the inventor's prob- 
lems, and assist him to determine the relative 
patentability of his inventions. For the sake 
of an example we shall take it for granted 
that the reader has conceived an idea which 
he thinks is sufficiently novel to make it the 



98 PATENTING AND PEOMOTING 

subject of a patent and can be put on the 
market with profit. We shall also take 
it for granted that he is wholly unfa- 
miliar with the proper procedure to as- 
certain the proper course to pursue. Seeing 
such an advertisement, he writes to Messrs. 
Swindel & Myth, enclosing a drawing of his 
invention, and requests that they also forward 
their free books. He shortly receives a reply, 
stating that they have made a preliminary 
search (whatever that may have been), and 
that in their opinion his invention has great 
merit. They state further that if he will for- 
ward five dollars they will make a special 
search (this being the actual search), in order 
to determine definitely its patentability. In 
the meantime he will have received their 
books, and if impressed by their contents he 
will forward the money in order to receive 
their ''Certificate of Patentability'' which he 
is assured will be of substantial assistance to 
him in seeking aid from friends or others to 
secure funds for defraying the expenses in- 
cident to obtaining a patent. He will £hen 
receive their opinion and Certificate of Pat- 
entability, supplemented in all probability by 
an enthusiastic correspondence relative to the 
great potential value of his invention, and a 
request for another payment of twenty dol- 
lars. For this amount they agree to prepare 



PATENT ATTORNEYS 99 

the application papers, including one sheet of 
drawings, and forward them for his approval 
and signature, when he must return them duly 
executed, together with the balance of fees, 
say twenty-five dollars, for what they term a 
simple case, and his application will be offi- 
cially filed. In most cases the opinion will be 
of the same or of less value than if he had 
consulted the corner grocer. Nevertheless, 
the books he has received have warned him 
against the wiles of the unscrupulous attor- 
ney, and have assured him that Swindel & 
Myth are the men of the hour and among the 
chosen few to be trusted. He therefore for- 
wards the specified amount, and shortly re- 
ceives his papers. The specifications and 
claims apparently cover his invention, so they 
are returned with the balance of the fees. It 
is well known that in more than 90 per cent, 
of applications filed, the Patent Office, upon 
initial action, rejects one or more claims upon 
reference to prior patents. These are usually 
the claims which are broadest in scope, and it 
is a simple matter for the attorney to cancel 
those claims which are objected to, and secure 
an issue covering the limited and restricted 
claims. It is also simple to appreciate of what 
value such a patent will be to an inventor. 

In all probability this is precisely the char- 
acter of patent the applicant will receive upon 



100 PATENTING AND PROMOTING 

the payment of the final fee payable to the 
Government within six months from the time 
he receives notice that his patent has been 
allowed. Now if we assume that his invention 
had no merit, either through lack of novelty, 
prior use, or existing patents, a reputable 
attorney would have so advised him instantly. 
If on the other hand it was worthy of proper 
protection, it may now have been rendered 
useless, thanks to the clumsy bungling of 
Swindel & Myth. It has been explained, how- 
ever, that a defective patent can be reissued, 
and if promptly placed in the hands of a com- 
petent attorney the situation can usually be 
saved for the inventor. 

The writer does not wish to give the impres- 
sion that all patent attorneys who use adver- 
tising methods, even of a somewhat similar 
nature to the ones mentioned, are dishonest, 
or do not endeavor to give the best service 
at their command. There certainly must be 
some who are actuated by honest purpose, but, 
at best, the literature that they issue is a 
large contributory cause for the thousands of 
patents that are issued which are valueless 
and which complicate the work of the Patent 
Office to a deplorable degree, to say nothing 
of the tremendous financial waste occasioned. 

To return to the advertisement printed, it 
will be interesting briefly to review the free 



PATENT ATTOENEYS 101 

booklets offered. "How to Invent and What 
to Invent" will be found to be a most flamboy- 
ant brochure informing its readers that men 
or women with the ordinary quality of intelli- 
gence can become inventors if they will but 
cultivate their ideas. Unless quoting such 
geniuses as Thomas A. Edison, George West- 
inghouse and others, and printing photo- 
graphs of the Patent Office, and the spacious 
offices occupied by the firm, together with sev- 
eral pages of well known mechanical move- 
ments, is calculated to teach the art of invent- 
ing, nothing more than mild amusement can 
be obtained from such literary efforts, unless 
the remarkable information that perpetual 
motion cannot be solved is enlightening. If 
there is anything left out which should not 
be invented, from ink to buildings, it is hard 
to discover. The result of all this kindly advice 
and suggestion makes itself manifest by the 
thousands of would-be inventors who flood the 
Patent Office with requests for recognition 
for every manner of ingenious device to cover 
the same use. To sum up such booklets, a 
good rule to follow would be ^^What to invent 
is tvhat not to invent/^ 

"How to Secure a Patent," and similarly 
titled publications, give a general outline of 
the steps necessary to procure a patent, with 
a careful avoidance of the many difficulties 



102 PATENTING AND PROMOTING 

which confront the inventor and a studied in- 
sistence that the firm issuing the book is the 
only firm which will be able to lead the client 
to success and wealth. Despite the brilliant 
and capable patent lawyers who have prac- 
tised and who are successfully practising in 
New York, Philadelphia, and other large 
cities, if one were to believe the statements of 
these past masters in self laudation, he would 
be convinced that Washington is the only place 
in America where the practise of patent law 
can be properly conducted. To give credence 
to such drivel is as absurd as to take ^Tor- 
tunes in Prizes Await the Inventor" seriously. 

Another means employed by the advertising 
solicitors, further to augment their incomes, 
is to claim to be specialists in ^^rejected cases.'' 

^^Because one attorney has failed to obtain 
an issue is no reason why we should not suc- 
ceed,'' is their modest plea. ^'When all others 
fail, consult old Dr. Quack" is quite synony- 
mous. This very frequently appeals to the 
inventor who has met with disappointment, 
and as an initial advance fee is demanded, 
usually five dollars, the aggregate of these 
small fees alone runs into large figures. If the 
inventor can be convinced that there is still 
hope, the solicitor will remain upon his payroll 
for another space of time. The adage, ''A 
burned child dreads the fire," finds many ex- 



PATENT ATTORNEYS 103 

ceptions among that class of inventors who 
take ^^How to Invent and What to Invent'^ 
seriously. 

One of the most deplorable practices of cer- 
tain attorneys, patent selling agencies, and 
self-styled patent brokers, is the inveigling of 
inventors to apply indiscriminately for for- 
eign patents which they know full well will be 
absolutely valueless. It has become a wide- 
spread and most serious evil, and every effort 
should be made by the Federal authorities to 
stamp it out. Such unscrupulous men urge, 
after such patents have been taken out, that 
the inventor apply through them for foreign 
patents, with the full knowledge that such 
patents, though obtainable by reason of the 
fact that in many countries there is no pre- 
liminary examination as to novelty, will of 
necessity be invalid by reason of the issues 
obtained here. 

It is also not uncommon for the attorney to 
take out a great number of unnecessary pat- 
ents, covering every little unimportant fea- 
ture or improvement of a machine or device. 
The fees of the advertising and wholesale type 
of attorney for obtaining patents are small, 
sixty-five to one hundred dollars being usual 
for an application not involving any special or 
unusual amount of work, and as the profes- 
sion is overcrowded with men who attempt 



104 PATENTING AND PROMOTING 

this line of work, many solicitors could hardly 
exist unless they padded the expense of their 
client in this manner. Of course a man of 
high principle would not be a party to such 
unethical methods. On the other hand, cor- 
porations, and others interested in important 
inventions, spend thousands of dollars taking 
out patents on seemingly unimportant details 
of an invention, and consider that it pays to 
do so. It will be understood, however, that 
this is done under the direction of a compe- 
tent attorney. 

Many unscrupulous attorneys will encour- 
age a client, for the sake of the fees he can 
obtain, to apply for patents which he knows to 
be of no commercial value to the inventor. 
But it frequently happens that the inventor is 
to blame, and insists on filing applications for 
patents on inventions which his attorney ad- 
vises him are of little or no value. 

Reliable Patent Attorneys. 

It is perhaps unnecessary to state that no 
attorney of high standing, nor one who is jeal- 
ous of his reputation and hopes to attain to 
prominence in his profession, will resort to 
any petty practices in order to obtain addi- 
tional fees. 

The writer is personally acquainted with a 
prominent attorney, an inventor himself, who 



PATENT ATTORNEYS 105 

gives up considerable of his valuable time to 
advising men who seek his services against 
attempting to obtain patents. By profession 
both an able mechanical engineer and an at- 
torney with many years of experience, this 
man has devoted much of his time in attempt- 
ing to correct the abuses which have made 
themselves manifest in the practice of patent 
law. 

There are many such men who practise be- 
fore the Patent Office, but unfortunately the 
services of the majority of our great patent 
lawyers are not available to the average in- 
ventor. They quite naturally command large 
fees, and in many cases are retained by a few 
prominent clients whose patent work is of 
such proportions that these men have little 
time for general practice. In many cases, 
however, these prominent patent attorneys 
have junior associates whose services can be 
obtained, and their methods naturally follow 
the trend of their worthy preceptors. If an 
invention has sufficient potential value to war- 
rant its protection by patent, it most certainly 
merits being handled in the best possible man- 
ner. With patents, as with everything else, 
cheap service generally proves the most ex- 
pensive in the end. 

There are many competent and efficient at- 
torneys whose efforts are directed to the best 



106 PATENTING AND PEOMOTING 

interests of their clients, both as to advice 
given and in the conscientious and thorough 
prosecution of patent applications entrusted 
to their care. Such attorneys are invariably 
fair in their charges, which are usually based 
upon the time consumed in the study and 
preparation of the specification and claims of 
the application. The same care and thorough- 
ness is devoted to the study of references and 
the further prosecution of the application 
through the Patent Office. Unfortunately, in- 
ventors have been misled by the advertising 
type of attorney and have acquired the notion 
that patents may be secured at so much per, 
just as the contractor would agree to build a 
row of houses. It will be understood that 
some inventions are simple and require com- 
paratively little time on the part of the attor- 
ney for preparation and prosecution, while 
other inventions, even though apparently sim- 
ple, require an enormous amount of concen- 
trated effort, study and work to get the 
proper protection and overcome the difficul- 
ties and objections raised in the Patent Office. 
For this reason, it will be apparent that the 
fees of the reliable attorney cannot be based 
upon or compared with the fees of an adver- 
tising attorney or one who attempts to obtain 
patents by the wholesale. The conscientious 
attorney who thoroughly understands the 



PATENT ATTORNEYS 107 

general sciences and mechanics in particular, 
both theoretical and practical, and who has 
had a wide experience in the prosecution of 
applications, is obviously better fitted to 
grasp the inventor^s point of view and, there- 
fore, is enabled to more clearly present the 
invention to the Patent Office. He is also en- 
abled to study and understand any references 
cited by the Examiner during the prosecution 
of the case, and more clearly distinguish the 
applicant's invention from the references. 

It is the bargain hunting inventor who more 
readily responds to the wiles of the advertis- 
ing attorney. It is false economy for inven- 
tors and their backers to figure on spending 
thousands of dollars on the development of a 
desirable commercial invention, which may 
require an investment of $50,000 or more to 
manufacture and market, and expect to save 
by bargaining with a cheap attorney to take 
out the patents, which are the very founda- 
tion of the business. Of course, a commer- 
cialized invention may fail for lack of merit, 
but, if successful, there will be imitators un- 
less the patents concerned indicate that no 
expense or effort has been spared to obtain 
the broadest protection. Such patents are 
less likely to be infringed, particularly if the 
manufacturing investment required is large. 

Some attorneys, while conscientious in their 



108 PATENTING AND PEOMOTING 

efforts for the client, do not have sufficient 
educational training in science and mechanics 
or practical designing to fully understand the 
invention in all its details, and for this reason 
they rely largely upon the inventor to point 
out to them what he considers the essential 
novel features of his invention. It is highly 
desirable that this should be done under all 
circumstances, but it is also desirable that the 
attorney selected should be able more thor- 
oughly to comprehend the novel and patent- 
able features of the invention than could be 
expected of the inventor. If the attorney is 
thoroughly skilled in physics, mechanics and 
general science, as well as having more or less 
practical knowledge of inventions from the 
inventor's point of view, such an attorney can 
usually see much further as to the scope of 
an invention than the inventor. Such an at- 
torney's experience in drafting claims and 
preparing the specification and drawings to 
properly and completely cover the invention, 
should be emphasized as of much greater im- 
portance in securing valid patents than could 
ordinarily be obtained by the inventor, either 
alone or in connection with an attorney who 
does not go into the subject fully, or depends 
for his information upon the inventor. 



CHAPTER VI. 
EXPERT INVESTIGATION. 

1. Eeport on X Ignition System, (a) General Information on 
Ignition Systems, (b) The High Tension Magneto, (c) The 
Induction Coil, (d) The Wipe Spark System, (e) The At- 
water — Kent System, (f ) Spark Plugs, (g) X Ignition Sys- 
tem, (h) X System Applied to Ford Car. (i) Compression 
Test, (j) Time Tests, (k) Advantages of X System, (i) Dis- 
advantages of X System, (m) Eeport on Patent Situation X 
Ignition System. (n) Conclusion. 2. Eeport on ''Bacon" 
Multiplying Machine, (a) Findings. (b) Eecommendation. 
(c) Engineering Eeport. (d) Patent Situation, (e) Inves- 
tigation of Commercial Field, (f ) Findings of a Commercial 
Nature. 

It has been the aim throughout this volume 
to emphasize the importance of an expert pre- 
liminary investigation, supplemented by an 
exhaustive analysis, before any industrial 
project is attempted involving the commercial 
exploitation of a new invention or discovery, 
or of an alleged improvement on existing de- 
vices or methods. The vital need of such a 
procedure cannot be disputed. This chapter is 
formulated with the object of showing how 
such investigations are carried out by firms 
who make a specialty of this service for bank- 
ers and individuals, and who are for this rea- 
son equipped with laboratories, shop equip- 
ment, and an organization made up of men ex- 

109 



110 PATENTING AND PROMOTING 

pert in the many lines involved. As the par- 
ticular design of this chapter is to point out 
to the banker or investor the manner in which 
such investigations are accomplished, the 
writer considers that the best method to effect 
this design is to print in detail the results or 
findings of two such investigations. In select- 
ing examples for the purpose of illustration, 
the writer has chosen, first, a project which 
was well advanced in its development, but 
had reached a point where those interested 
saw the importance of such a course before 
further capital was invested, and second, one 
which was in its incipient stage. 

In each case the investigation was conduct- 
ed by a firm of industrial engineers, who have 
made such service an important department 
of their business. It has been deemed best to 
publish these reports as much in detail as pos- 
sible in order to show clearly the thorough- 
ness of such work when properly handled. 

In the first case cited the investigation was 
carried out at the request of bankers who 
were approached to finance the invention in 
question, and whose final decision was based 
entirely upon the findings. 

In using these reports other than the orig- 
inal names have been substituted to designate 
the devices and the parties in interest; other- 
wise no material changes have been made. 



EXPERT INVESTIGATION 111 

REPORT COVERING THE MERITS OF THE 
"X'' IGNITION SYSTEM. 

General Information Concerning the Ignition of 
Explosive Mixtures, and Existing Ignition Sys- 
tems. 

When inflammable fuel and air are mixed in cor- 
rect proportion, they will burn, and so rapidly that 
such burning constitutes an explosion, which is, of 
course, only extremely rapid combustion. It is 
known, however, that the full firing of an explosive 
charge (in the case in question, gasoline and air) 
does not take place instantaneously. From casual 
observation it would appear that it does, but the- 
oretically it is known to ignite layer by layer until 
the whole mass becomes a flame and consequently 
creates a pressure; hence the power derived for 
propelling the pistons of an engine. It therefore 
stands to reason that the hotter the ignition me- 
dium, the greater the possibilities for the complete 
ignition of the explosive mixture in the shortest 
period of time. 

Many ignition systems have been invented for 
the sole purpose of firing internal combustion en- 
gines, all more or less differing in the methods 
they employ to attain the desired result. The fol- 
lowing is descriptive of a few of the most success- 
ful systems now in use : 

THE HIGH TENSION MAGNETO: 

The high tension magneto generates a high 
tension discharge at the plug points due to open- 
ing the primary circuit suddenly at the mo- 
ment the armature is about to leave the concave 
portion of its respective pole pieces. This system 
has proven satisfactory except when the engine is 
running slowly. This objection is due to the arma- 
ture not cutting the lines of force with sufficient 
rapidity; also that the breaker points are not sep- 
arated quickly enough to cause the peak value of 
the induced current to rise to its highest altitude. 
This system creates one spark per explosion. 



112 PATENTING AND PROMOTING 

THE INDUCTION COIL: 

The induction coil generates a high tension cur- 
rent, and is perhaps one of the most satisfactory 
systems in use, its only objection being that the 
platinum points of the vibrator parts occasion- 
ally stick, due to burning, pitting, etc. The flexi- 
bility of the induction coil is considerable, inas- 
much as a great number of sparks of intense heat 
can be liberated at the plug points for any period 
during the travel of the piston. This, of course, 
depends on the length of the segments provided in 
the distributor. An induction coil, however, need 
not be provided with the trembler and associated 
platinum points, as it will function just as satis- 
factorily if the primary circuit be broken a num- 
ber of times mechanically by means of a breaker. 
The mechanical breaker will open the primary cir- 
cuit rapidly, irrespective of the speed at which 
the timer shaft of the engine may be running. 
This is important, as the quicker the primary cir- 
cuit is broken, the higher the peak value of the 
secondary current. The frequency of the average 
induction coil used for the purpose in question 
varies from 80 to 200 vibrations per second. 

THE WIPE SPARK SYSTEM: 

The wipe spark system is used in connection 
with small engines. Its field is limited, being re- 
stricted to engines designed for motor boats. A 
low potential of approximately 8 volts is conducted 
to a kick coil composed of a large core of iron, 
on which is wound a considerable number of turns 
of copper wire. When the contact points, to which 
the battery and coil are connected in series, are 
closed, the current has an unobstructed path 
throughout the windings, thereby setting up lines 
of force in the core. When the contact points 
are again separated, the self-induced E. M. F.'s 
generated and stored in the coil are liberated — 
hence the spark at the point of separation. This 
system providing one spark per explosion is recom- 



EXPERT INVESTIGATION 113 

mended for motor boat engines, because no high 
tension wires which may become short circuited 
due to spray are necessary. 

THE ATWATER-KENT SYSTEM: 

The Atwater-Kent system is composed of one 
main induction coil, and a distributor and breaker 
combined. This system has met with great favor 
among automobile owners, as its upkeep is slight. 
It operates on 6 volts, and will supply a good hot 
spark until the batteries are so weak that they 
can produce only half an ampere or less. No mat- 
ter at what speed the engine may be running, this 
system will emit one hot fat spark at the plug 
points. Furthermore, it is impossible to short- 
circuit the batteries and primary of the induction 
coil, no matter at what position the timing shaft 
may stop. 

A number of other systems are now in use, but 
they are all more or less similar to those outlined. 
It will therefore be unnecessary to describe them, 
further than to note that they all create a hot fat 
spark which is absolutely essential for the ignition 
of a gasoline vapor mixture, particularly when the 
mixture is cold, or not of the right proportions in 
air or gas. 

SPARK PLUGS: 

Spark plugs used in connection with internal com- 
bustion engines must resist 350 pounds pressure 
per square inch, and must withstand a tempera- 
ture of 3,000° Fahrenheit, by reason of the fact 
that they are in contact with the flaming gases 
during the explosions. Also the insulation be- 
tween the shell and the middle electrode must 
withstand a potential of 25,000 volts. A high ten- 
sion spark intended to ignite an internal explosion 
engine must be able to jump a distance at least 
six times the gap between the points of the spark 
plug. In large engines it has been found advisable 
to ignite the mixture at two different points of 



114 PATENTING AND PROMOTING 

the cylinder head. This is accomplished by pro- 
viding for each cylinder, one plug having two in- 
sulated electrodes and one standard plug. The 
plugs after being mounted are connected in series. 
The spark will then have to pass across the two 
points of the special plug to ground. While, as 
has been stated, this method is recommended for 
large engines, it has been proven that it will in- 
crease considerably the i>ower of smaller engines. 

THE "X'' IGNITION SYSTEM: 

In order to determine whether this system as 
submitted would function properly, it was decided, 
after much study and several tests, that the Ford 
car was best adapted for this purpose, particularly 
that the Ford system could be kept intact, ex- 
cept for a few minor changes, during the time 
when the ''X" system was being tried out, and 
that all objectionable variables could be avoided 
during the tests. 

THE ''X'' SYSTEM APPLIED TO FORD CARS: 

The system as originally submitted worked suf- 
ficiently well to run the car at low speeds, but 
even under these circumstances the explosions 
were not regular, and on climbing hills the system 
had invariably to be dismantled and the original 
system replaced before the journey could be re- 
sumed. The causes for these troubles were diag- 
nosed as follows: 

First : The breaker points become foul, due to 
excessive primary sparking which cannot be elim- 
inated, as to provide a condenser shunted across 
the gap would prevent the system from working. 

Second : The engine must be run at high speed 
in order to climb hills, and as the system did not 
function under such conditions, the engine would 
stall. 

In order to determine whether these two dif- 
ficulties were the only causes of trouble, we pro- 
ceeded as follows : 



EXPEET INVESTIGATION 115 

After experimenting in the laboratory, new coils 
were made up and installed in the car. On exam- 
ining the spark at the plug points they appeared 
to be functioning satisfactorily at cranking speed. 
However, when they were again screwed into the 
cylinder heads, it was found impossible to ignite 
the mixture, and it was concluded that the spark 
was not hot enough to ignite a cold mixture. The 
temperature at the time this test was made was 
below freezing. The system was then removed 
and the Ford system again installed when the en- 
gine ran perfectly and gave no further trouble. 

A number of coils were made up and several con- 
densers of different capacities were provided in or- 
der to balance the constants of the circuit so as 
to create a good spark. At the conclusion of this 
test and development, a circuit composed of the 
most efficient detailed apparatus was installed at 
the laboratory and operated in the same manner 
as would be expected under actual working condi- 
tions. The following will give an idea of the ap- 
paratus provided and also of the results obtained. 

COMPRESSION TEST: 

An air compressor was provided with an attach- 
ment in the form of a box having a glass front 
and apertures in the rear into which four spark 
plugs were screwed. To each plug in turn was 
connected the following ignition systems: 

"X" Ignition System 

Ford 

Atwater-Kent 

Connecticut ^ 

Pittsfield. 
The pressure was raised to 150 pounds per 
square inch, and it was noted that all the sys- 
tems emitted sparks satisfactorily. Since all en- 
gines compress their charges before firing, to a 
pressure of from forty to eighty-five pounds per 
square inch, it was decided that all of these sys- 
tems tested proved themselves efficient from a 
pressure standpoint. 



116 PATENTING AND PROMOTING 

TIME TESTS: 

(The report sets forth in most minute detail the 
exhaustive and ingenious comparative tests which 
were made with the different systems, but the 
writer feels that they are entirely too technical 
to interest the average reader, and they are 
omitted for this reason. Each system was given 
exactly the same tests, in connection with the 
same engine selected for this special purpose, and 
the operation of the engine running with the "X" 
system was very unsatisfactory.) 

ADVANTAGES OF THE ''X'' SYSTEM: 

1. The absence of high tension wiring. 

2. The cheapness of the kick-coil construction. 

3. The small amount of current consumed. 

4. The low thermal value of the spark, * * * * 
**5. Possible adaptability to motor boat engines, 

which would however have to be care- 
fully determined. 

**The Perfex Ignition System is composed of 
a similar device; namely, the plug constitutes an 
induction coil. This system has never been used 
for automobile ignition, but has given fairly sat- 
isfactory service when used for igniting motor 
boat engines. 

DISADVANTAGES OF TEE ''X'' SYSTEM: 

1. The majority of automobile manufacturers 
equip their cars with systems which will provide 
lighting, starting, and ignition. The **X'' system 
could not be used in connection with the above. 

2. In order to prevent leakage of the high fre- 
quency discharges the plug would have to be de- 
signed so as to completely envelop the Tesla coil, 
and be of such material and of such thickness that 
the charge would be absolutely confined. The in- 



EXPERT INVESTIGATION 117 

creased size over the present standard plug would 
make its application objectionable for the follow- 
ing reasons : 

(a) Being topheavy, the tendency would be for 

it to jar loose from the cylinder head. 

(b) It would be cumbersome to handle. 

(c) Two wires would have to be attached to 

each plug. 

(d) Greater expense in comparison with 

standard plug. 

(e) The plug would have to be rem.oved from 

engine to ascertain whether sparks ^ere 
or were not taking place. ^ 

3. The operation of the system depends^ en- 
tirely on the functioning of the condenser, and 
this apparatus being an open circuit device is not 
recommended for use in connection with any elec- 
trical device when it is used in series with the 
main circuit, particularly when the operation de- 
pends on its charge and discharge. 

4. Should the breaker points be in .contact 
when the engine stops, the circuit, composed of 
the kick coil, would be directly across the battery, 
and as this is of very low resistance, the batteries 
would be short circuited and consequently run 
down in a few minutes. To overcome this ob- 
jection, it would be necessary to provide in the 
circuit an automatic cut-out available on the dash- 
board of the car. Such a device is expensive to 
manufacture. 

5. The primary of all ignition systems at the 
junction known as the breaker points is shunted 
by a condenser, which eliminates the intense spark 
whenever the points are separated. It also elim- 
inates the burning away of the platinum points, 
known as ''pitting." Such a condenser is impossi- 
ble in the ''X" system, as it renders it inoperative. 

6. It has been proven by research that the hot- 
ter and fatter the spark, the greater the chances 
of igniting a gasoline-air vapor, particularly when 
the latter is cold. The spark generated by the 



118 PATEXTIXG AND PROMOTING 

'*X'' system is exceptionally thin and appears to 
have little thermal value. In the majority of 
ignition systems now in use, if the potential im- 
pressed on the primary circuit should drop 40 fc, 
the ignition would still be ample to keep the en- 
gine running. Under the ''X'' system, in order to 
maintain satisfactory ignition, the potential must 
be kept at its maximum, othenvise the induction 
coil would not be charged sufficiently in the short 
period of time to completely charge and discharge 
the condenser; hence the system becomes inop- 
erative. 

7. It was anticipated that the ''X'' system 
would be cheaper than other systems now in use. 
In this connection it will be of interest to com- 
pare the equipment of an automobile with a 
twelve-cylinder engine using the ''X" system and 
one using, we will say for example, the Atwater- 
Kent, Connecticut, or Remy system. For the car 
using the '*'X'' system, thirteen coils would be 
necessary, whereas a car using any of the other 
systems mentioned would only have to be pro- 
vided with one coil. 

REPORT OX THE PAT EXT SITVATIOX: 

As a result of our investigation as to the ig- 
nition system disclosed in the applications of *'X" 
Nos. , and , we en- 
close under separate cover copies of the follow- 
ing patents : 1,092,398,— 1,116,130,— 609,250,— 
869,208, — 1,138,569, — 732,014, — 1,086,565, — 
1,093,072, — 763,893 and 884,731. 

In examining this matter, we find that the 
broad idea as disclosed in the '*X" apphcation No. 
, is the use of a condenser as the pri- 
mary coil of a transfomier, the device being in- 
tended for use in high tension electric currents, 
for lighting systems and other uses. We find, 
^ however, in the prior art as e\'idenced by the pat- 
ent to Schiessler, Xo. 1,116,130, there is disclosed 
the idea of a condenser as a transformer, which 
effectually precludes the possibility of obtaining 



EXPEET INVESTIGATION 119 

any broad claims along this line. In the patent 
to Rogers, No. 1,092,398, there appears to be dis- 
closed every element of the "X'' construction in 
application No. except that the con- 
denser is not the primary of the transformer, 
though in circuit therewith. In view of the dis- 
closure in the Schiessler construction, we are un- 
able to discover that there would be any patenta- 
bility result from rearranging the "X*' device 
so as to include the condenser as the primary of 
the transformer, as clearly disclosed in patent to 
Schiessler. Furthermore, it will be seen from the 
patents enclosed that the use of a condenser as an 
element in a high tension discharge system is 
old and frequent ; in fact, any number of instances 
of such use can be cited. This particular type of 
device almost always includes a condenser for 
this purpose. With this view of the prior art, we 
fail to see that there is any novelty disclosed in 

**X'' application No. , unless it rests in 

the specific mechanical details of the arrangement 
of the various parts with respect to each other, 
which protection would be of no practical value. 

In connection with application of "X'' No. 

, the disclosure in Patent to Hughes No. 

1,138,569 is interesting, the same disclosing a 
transformer in immediate connectiion with the 
spark plugs and having condensers interposed in 
the ground, and in this connection your attention 
is called to the patent to Hardy, No. 884,731, 
which forms part of the spark plug as shown. The 
disclosures in No. 95,425, therefore, when consid- 
ered in connection with "X" No. , appears 

to present no patentable novelty, or if any, of 
such limited scope as to be practically valueless. 

Regarding appHcation ''X'' No. , we 

are compelled to admit that a careful study of the 
same brings us to a point no closer to the actual 
operation of the device than apparently was 
reached by the examiner in his action in this c^se, 
the drawing certainly being nebulous and the de- 
scription anything but clear. However, our opin- 



120 PATENTING AND PROMOTING 

ion with respect to application No. seems 

to apply to this with equal force, as far as it is 
intelligible. 

With this view of the structure disclosed in the 
three applications referred to, we are very firmly 
of the opinion that the ''X'' system as a whole 
is devoid of any broad patentability, and fur- 
ther, as far as the details can be understood, is 
very thoroughly anticipated by the prior art, as 
shown in the patents sent. 

CONCLVSION: 

The tests of the **X" ignition system which 
have been made under actual working conditions, 
as well as those made in conjunction with other 
ignition systems of different characters, have 
proven that the ''X'' system is unreliable. Neither 
is it one which embodies any advantages over 
other systems at present in use, excepting that it 
eliminates the use of high tension wiring. 

For laboratory experiments and medical pur- 
poses, high frequency current is well adapted, but 
for the purpose of igniting internal combustion en- 
gines, exhaustive research has shown it to be 
highly impracticable. Modern motor-car manufac- 
turers strive for simplicity in mechanical equip- 
ment, to meet the limited knowledge of the aver- 
age driver, and it would seem illogical to expect 
the average driver to understand the nature and 
operation of a system so complicated and erratic. 
It would therefore appear that the motor-car man- 
ufacturer would look with disfavor on the in- 
stalling of such a system on his product, espe- 
cially as his sales depend entirely on the quality 
of materials and the reliability of the accessory 
apparatus. After careful consideration of the 
merits and demerits of the system under investi- 
gation, which were brought out by the tests, we 
are firmly of the opinion that the latter far ex- 
ceed the former. 

From present-day knowledge of high frequency 
currents, it does not appear possible that means 



EXPERT INVESTIGATION 121 

can be found whereby such systems can be ad- 
vantageously applied for igniting internal combus- 
tion engines. 

We are, therefore, of the opinion that the **X" 
ignition system, from a practical, commercial or 
technical standpoint, is not a success. 

The conclusions arrived at from an investiga- 
tion into the prior art and general patent situa- 
tion show clearly the inadvisability of favorably 
considering this ignition system. 

Respectfully submitted, 



S A S , Inc., 

Industrial Engineers. 

The foregoing report demonstrates very 
clearly the great importance of investigation. 
It is also quite obvious what the financial re- 
sult would have been had not the parties con- 
templating the financing of the project most 
wisely instituted such an investigation. For- 
tunes have been utterly thrown away on al- 
leged inventions of far less merit than the one 
just reviewed. As this case stopped with the 
findings of the experts in regard to the prior 
art and its mechanical impracticability, its 
commercial possibilities were summarily dis- 
missed at the conclusion of the patent inves- 
tigation and tests. 

The following report should be found of 
great interest and particularly enlightening 
as it covers practically every phase which en- 
ters into an expert investigation, preliminary 
to attempting to place a new device on the 



122 PATENTING AND PROMOTING 

market The writer has omitted those por- 
tions of the report which he considers are not 
needed to make the whole situation and the 
methods employed perfectly clear to the 
reader. 

REPORT ON 
BACON MULTIPLYING MACHINE 

June 29, 1917. 
Mr. George M. Bacon, 
Salt Lake City, Utah. 

Dear Sir: 

Your instructions under date of March 22, 1917, 
requested that we assume for a period of one year 
the management of your problem, a ^'direct mul- 
tiplying machine" — ^patent application in U. S. 

Patent Office, Serial No. , dated Nov. , 

1916, for which you supplied us with plans, speci- 
fications and other information of a technical 
nature. 

To arrive properly at definite conclusions, we 
have proceeded to carry out our investigation and 
recommendations along the following lines: 

1. Analysis of the initial plans submitted. 

2. Preliminary patent investigation. 

3. Investigation of the commercial field. 

4. Model making. 

5. Manufacture of tools. 

6. Manufacture of finished machines. 

7. Marketing. 

The problem submitted to us for analysis is 
one where we had to make certain of the first 
three steps before you could be advised to proceed 
safely and properly with the expenditures involved 
in development work. 

We have fully stated our recommendations at 
the close of this report. 



EXPERT INVESTIGATION 123 

FINDINGS: 

Our general findings are: 

1. That mechanically- the device is new in its 

plan of construction. 

2. That from the preliminary examination of 
the prior art it stands alone, from a pat- 
ent law point of view. 

3. That the commercial investigation fully 

brings out the fact that no direct multiply- 
ing machine has been built or placed on 
the market, and that there is a demand for 
a small and a large listing machine of this 
type. 

RECOMMENDATIONS: 

Our 'general recommendation is: 

That a small three-place direct multiplying ma- 
chine be redesigned and built to include all such 
features as are found necessary to render the ma- 
chine operative in accordance with the principle 
laid out in the invention. 

During the period of three months, from March 
25th to June 25th, 1917, we have been able to 
cover the following: 

(a) Study of the initial plans — or engineering 
report. 

(b) Preliminary patent investigation. 

(c) Investigation of the commercial field. 

This work was carried out by four departments 
of this concern; and at least one hundred indi- 
viduals and heads of concerns, in some way iden- 
tified with computing machine devices, have been 
interviewed. 

ENGINEERING REPORT: 

In examining the preliminary data submitted 
we have divided the work into two parts : 

1. An analysis to determine whether the ma- 
chine as originally designed would perform 
its functions. 



124 PATENTING AND PROMOTING 

2. An analysis to determine what changes, if 
any, would have to be made to bring about 
a perfect functioning in the machine. 
Careful preliminary study proves that in prin- 
ciple the machine will perform its functions sub- 
stantially as outlined by you, except in two par- 
ticulars, which would fail of their objects, i.e., 

(a) The order in which the multiplicand and 
multiplier dials are set. 

(b) The order in which the multiplicand and 
multiplier dials are reset. 

(Here follows the detailed report of how these 
changes and other objections in the design would 
be overcome, all of which is technical and unneces- 
sary to print in order to render the illustration 
plain. The engineering report is qualified by the 
following statements) : 

1. The general arrangement of the mechanism 
is comparatively simple. 

2. Regarding approximate sizes of machine, 
it will be necessary to enlarge diameters of 
differential wheels slightly, as present di- 
ameter of low ratio is impracticable. 

3. The machine should be inclined at an angle 
to facilitate readings. This would increase 
the height, but the machine may be consid- 
ered portable if limited to the number of 
digits we recommend. 

4. The principle of the machine will permit 
of increasing the number of digits by addi- 
tional differential units and transfer mech- 
anisms. 

5. There do not appear to be any unusual prob- 
lems involved in tooling for manufacture. 

6. At the present time it would be difficult to 

make an estimate on cost of production. 
This can be done accurately, both as to tools 
and manufacture, upon completion of final 
shop drawings. 



EXPEET INVESTIGATION 125 

7. The general design of the machine is such 
that the finished product may be made very 
pleasing in exterior appearance. 

8. The following are among the mechanical dif- 

ficulties anticipated: 

(a) Possibilities of excessive friction. 

(b) Lost motion in the intermittent dif- 
ferential gears. 

(c) Possibility of overthrow on the 
product dials. 

9. The machine is capable of functioning as 

described, but discrepancies may be encoun- 
tered which can be determined only as the 
development work and tests progress. 

PATENT SITUATION: 

We have studied carefully the reference cited 
in the rejection of Jan. — , 1917, in the matter of 

the patent application Serial No. , filed Nov. 

— , 1916, with the exception of the Vermehren 
patent of July 10, 1906, which in the rejection is 
not identified by a number and no copy of which 
patent accompanied the papers submitted to us. 
We have, however, looked up this patent in the 
Patent Office Gazette and understand its relation 
to the art. None of the patents cited by the Ex- 
aminer meets the broad idea of Bacon's invention ; 
that is, employing a plurality of Series of differen- 
tial gears cooperating with a corresponding series 
of pinions adjustable radially to the respective 
differential gears and shafts connected with pro- 
duct dials adapted to be driven by one or more 
pinions to accumulate the product. This arrange- 
ment of gears seems to be new with Bacon, for 
the Patent Office has not cited anything like it, 
and in our examination of the art on multiplying 
machines, we have been unable to find any patent 
showing a machine operating in this manner. 
Vermehren shows a staggered arrangement and 
interconnected gear mechanism in his patent No. 
1,134,169 of April 6, 1915 (not a reference), but 



126 PATENTING AND PROMOTING 

in the machine illustrated in this patent he mul- 
tiplies by partial products instead of full and com- 
plete rotation, as is done in the Bacon mechanism. 

The Examiner is justified in rejecting most of 
the claims 1 to 14 of Bacon, in view of the Heber- 
ling et al, and Vermehren patents, because these 
patents show that the use of concentrically ar- 
ranged crown and spur gears corresponding to the 
differential gears (B) of Bacon was not new with 
Bacon, and therefore he is not entitled to claims 
covering the use of such a wheel in computing 
mechanisms. In view, however, of the fact that 
with the exception of claims 24 and 25, claims 
15 to 26 inclusive are considered allowable, the 
staggered or diamond arrangement and the inter- 
connection of the differential gears seem to be new 
with Bacon. In our opinion the claims are too 
specific, and in further prosecution of the appli- 
cation, an effort should be made to obtain broader 
claims on the combinations of mechanisms shown 
to be essential to the proper operation of the 
Bacon machine. The Examiner objects to the 
claims on the ground of multiplicity, because the 
claims recite specifically some old mechanisms. 
For this reason broader and more generic claims 
should be inserted. 

The specification in the Bacon application con- 
tains numerous mistakes and errors in description 
and should be revised and corrected. 

The question also arises in connection with this 
application of eliminating therefrom all references 
to the zero resetting mechanism of the multipli- 
cand dials, because this mechanism, as shown and 
described, is inoperative, and if this feature is 
retained, it will result in invalidating all claims 
including this feature or claims relating thereto. 

An examination of multiplying machine patents 
and the claims thereof fails to disclose any claims 
which in our opinion would interfere with the 
Bacon multiplying mechanism, or the improve- 
ments suggested in the engineers' report. The 
Bacon machine is not a key machine, neither is it 



EXPEET INVESTIGATION 127 

handle or power operated. For this reason many 
of the patents of modern commercial machines 
do not contain claims pertinent to the Bacon 
mechanism. 

So far as we have been able to discover, there 
are no so-called ''direct'' multiplying machines in 
any way resembling the Bacon mechanism on the 
market to-day. We have heard of several said to 
be direct multiplying machines under develop- 
ment, but their principle of operation and stage of 
advancement is not known to us. 

Several patents have been issued on machines 
having some of the features of direct multiplica- 
tion, and we call attention particularly to the fol- 
lowing: 

Patent to Saunders — ^No. 775,939. 

Patent to Rosenthal— No. 1,168,745. 

Patent to Crumpton — No. 1,174,831. 

Patent to Vermehren— No. 1,134,169. 

We might mention several other patents on 
multiplying machines, but we deem it unnecessary 
since they do not involve mechanism similar to 
that of Bacon, and those mentioned illustrate 
what has been done.* 

Referring to paragraph 4 on the patent situa- 
tion, an opinion was submitted based upon Mr. 
Bacon's specifications, relating to the resetting of 
the multiplicand dials, said opinion being that 
this mechanism is inoperative and ineffective as 



*It is to be noted that the patent report on 
Bacon does not represent a full and compkte in- 
dependent search, but is primarily based on the 
Patent Office action. A complete search would 
include a complete study of U. S. as well as for- 
eign patents. Any search, however, could not 
include pending applications of other inventors 
who might have worked out and filed applications 
on inventions of a similar scope. Such pending 
applications are likely to be found out by inter- 
ference proceedings if both parties try for the 
same claims. 



128 PATENTING AND PROMOTING 

described. From our drawing '*A'' attached, it 
will be noted that this fault is obviated. 

The patent examination indicates that the appli- 
cation would have to be redrawn to some extent, 
to cover broader generic claims, and also to cover 
the additional refinements and improvements that 
will be added during the process of redesigning 
the machine. A great deal of refinement is neces- 
sary, but we are convinced that ample ground work 
exists to warrant further study and development 
with the view of increasing the capacity of the 
machine, and at the same time keep within com- 
mercial limitations. We therefore recommend 
that no action be taken by your attorneys until 
December of this year, the latest date for submit- 
ting an application to the Patent Office being 
January — , . 

INVESTIGATION OF TEE COMMERCIAL FIELD: 

Our investigation to determine the commercial 
possibilities of the Bacon Multiplying Machine 
was conducted in the following manner : 

1. By interviewing a large number of adding 
machine companies and studying the liter- 
ature they publish. 

2. By interviewing all individuals whom we 
thought were in any important way con- 
nected with the manufacture, designing or 
developing of ''direct'' multiplying machines. 

In the first instance we have interviewed the 
following adding, computing and tabulating 
machine companies : 

Accounting Machine Co. 

Adding Machine Inspection and Sales Co. 

Adding Machine Maintenance and Sales Co. 
*American Can Company. 

Arithstyle Company. 

Automatic Adding Machine Company. 
*Barrett Adding Machine Company. 
*Brunsviga Multiplying and Dividing Machine Co. 



EXPERT INVESTIGATION 129 

*Burroughs Adding Machine Company. 

Calculator Mfg. Company, Inc. 
* Comptometer Company. 

Computing-Tabulating-Recording Company. 

Commercial Adding Machine Company. 
*Dalton Adding Machine Company. 

Denominator Adding Machine Company. 

Elliott-Fisher Company. 

Ellis Adding Machine Company. 
*Ensign Calculating Machine Company. 

Ficker Recording Machine Company. 
*Marchant Calculating Machine Company. 

Mechanical Accountant Company. 
♦Millionaire Calculating Machine Company. 
*Monroe Calculating Machine Company. 
*Muller Oscar Company. 

National Cash Register Company. 

New Standard Adding Machine Company. 

Powers Accounting Machine Company. 

Ratexa Computer Company. 

Ray Subtracto-Adder Company. 

Remington Typewriter Company. 

Standard Adding Machine Company. 
*Sundstrand Adding Machine Company. 

Tabulating Machine Company. 

Triumph Precision Machine Company. 
*Triumphator Calculating Machine Company. 

Underwood Computing Machine Company. 

Wales Adding Machine Company. 

White Adding Machine Company. 

Those companies manufacturing machines hav- 
ing multiplying features which claim either direct 
or indirect multiplication are indicated by a 
star (*). 

Other concerns or individuals claiming develop- 
ment of direct multiplying machines are : 
Moon-Hopkins Billing Machine Company. 
Bontempi Arithmograph Company. 
Koronski. 
Among patented machines not yet built, are 
those referred to in the Patent Report. 



130 PATEXTIXG AND PROMOTING 

The report then gives a general description 
of the multiplying features of the machines 
that multiply, and all significant points in con- 
nection with these machines, and those ap- 
proaching the direct multiplier are noted. 

In the second instance, the results of the 
many interviews with prominent men con- 
nected with the industry are given, and the 
consensus of opinion among these experts is 
that there is no direct multiplying machine 
at present on the market and that the field 
and demand for such a machine is enormous. 
These several interviews are entered exactly 
as they were received, and no responsibility is 
taken that they will hold. The report further 
reads : 

However, we are making our own deductions as 
to this part of the report, which we make a part 
of the findings and recommendations. 

FIXDIXGS OF A COMMERCIAL XATURE: 

1. That there is merit in the direct multiplying 
machine. 

2. That so far as we are able to find, there are 
no so-called ''direct" multiplying machines 
in any way resembling the Bacon mechan- 
ism, on the market at the present time. We 
have heard of several machines said to be 
direct multipliers under development, but 
their principle of operation and stage of 
developmient are unkno^^m to us. 

3. That two types of multiplying machines 
will be in demand — a small inexpensive t\T>e 
and a large listing type. 

4. That the high cost of the present indirect 



EXPERT INVESTIGATION 131 

multiplying machines prohibits a large dis- 
tribution of the same, and that for this 
reason a moderate priced machine would 
find a market. 

5. That the immediate market demands a small 
machine with five digits in the multiplier 
and seven in the multiplicand. 

6. That the weight of the small machine should 
not exceed twenty-two pounds. 

?• That it should not cost more than twenty- 
five dollars, when made in large quantities. 

8. That it should sell for at least one hundred 
dollars, and not more than two hundred 
dollars. 

The report closes with the final recommen- 
dation that in order to avoid a large unneces- 
sary expenditure, a machine be designed and 
built, having but three places each in the 
multiplier and multiplicand to prove the prin- 
ciple of the invention, and including the me- 
chanical recommendations, after v^hich a 
complete machine can be built for commercial 
exhibition. 

Mr. Bacon probably represents one out of a 
thousand who, shortly after the conception 
of his invention, has gone to great expense to 
determine and verify the value of the inven- 
tion before expending large sums in develop- 
ment. 

The writer feels thoroughly justified in giv- 
ing these two reports in the above detail, for 
there can be no better way by which such 
methods of Investigation and analysis could 



132 PATENTING AND PROMOTING 

be brought out so clearly and understandably. 
Such work forms the first step in successful 
promotion, which is discussed in the next 
chapter. 



CHAPTER VII. 
EVALUATING A PATENT. 

1. Distinction Between an Invention and a Patent. 2. Two 
Classes of Patents. 3. Forecast as to Value of Inventions. 
4. Factors Considered in Forecast. 5. Patent Protection. 

One of the most important functions of the 
industrial engineer is to determine for finan- 
ciers who are contemplating the backing of a 
patent, the potential value of their prospec- 
tive investment. 

An invention and a patent must be dis- 
tinguished; an invention does not need to be 
patented to be a new discovery and it will 
facilitate clearness of thought and analysis 
if we consider the value of an invention as 
consisting solely in its usefulness to man- 
kind, while the value of a patent consists in 
the pecuniary profit that the owner thereof 
can derive from the exploitation of the inven- 
tion covered by the patent. The strength of 
the patent, or rather — to speak more accu- 
rately — the strength of the patent situation 
is an absolutely vital factor; by the ''strength 
of the patent situation^^ we mean the relative 
strength of the patent. A concrete instance 
will perhaps most readily emphasize the 

133 



134 PATENTING AND PEOMOTINa 

importance of the distinction; a patent may 
in itself be absolutely strong, but it may 
be impossible to use the invention without 
infringing a prior patent. It may be that 
the invention covered by the prior patent was 
not commercially practical and that the prior 
patent can be bought up for almost nothing 
and thereby a weak patent situation con- 
verted into a strong one. We have dealt with 
this subject more specifically elsewhere, but 
the above instance will give an idea of what is 
meant by the expression "patent situation," 
or, as it is sometimes called, "the state of the 
art." Nevertheless the first consideration 
in attempting to arrive at a valuation of a 
patent is to determine the profits that may 
be realized from its exploitation, leaving until 
later the question of whether or no the 
patent situation is such that its exploitation 
can be exclusively controlled by its possessor. 
Patents may be rightly divided into two 
classes: 

(a) Those which cover a new product — 

such as the original telephone, 
aeroplane, etc., for which a new 
demand has to be created. 

(b) Those which cover improved pro- 

cesses of producing a well-known 
product or which cover a well- 



EVALUATING A PATENT 135 

known article adapted to be made 
more cheaply. 

Some inventions of this second class closely 
resemble those of the first in that by making 
an article more cheaply you bring it within 
the reach of a much larger class of people 
and so create a new demand. For instance, 
if Mr. Ford should invent an aeroplane that 
that he could retail for $100, the market for 
it would be much larger than the market for 
aeroplanes today (leaving out of considera- 
tion, of course, the war demand). In the 
case, however, of other inventions the demand 
is not affected and the demand is not a prob- 
lematical but a fixed factor. For instance, 
suppose a new process of baking bread were 
invented, the extent of the potential market 
could readily be gauged by finding out how 
many machines could be sold to take care 
of the demand for bread; the infinitesimal 
decrease in the cost of the production of the 
bread would be such as not to increase the 
consumption a particle, while it might be 
such that every bakery would find it neces- 
sary to buy the machine. Possibly the best 
instances of this type of invention are the 
linotype and the machines of the United 
Shoe Machinery Company. 

In the case of patents of this class the 



136 PATENTING AND PROMOTING 

demand can be forecast with reasonable 
accuracy. So also the pecuniary value which, 
always assuming for the time being that the 
patent situation is satisfactory, can be de- 
termined by multiplying the demand by the 
saving effected. For instance, if the inven- 
tion is an improved machine which saves 
$1,000 a year in wages and there is a market 
for 1,000 such machines, the annual value 
of the invention is $1,000,000, or $17,000,000 
for the life of the patent. The value of the 
patent depends — always with our original 
assumption as regards the patent situation — 
on the proportion of the saving which can be 
retained by the owners and the extent of the 
potential market which he is able to capture. 
For instance, in the case cited above the field 
may be such that the whole field can be cap- 
tured and the cost of the machines paid for 
by the licensees who also pay a .royalty equal 
to half the saving effected; in this case the 
value would be $8,500,000. Or it might be 
possible to capture only 10% of the field and 
necessary to sell the machines outright at a 
profit of $100 apiece. 

The foregoing considerations, however, are 
rather of theoretic than of practical impor- 
tance because so many other factors must 
be considered. They assume that unlimited 
capital is available; they take for granted a 



EVALUATING A PATENT 137 

world-wide organization capable of putting 
the article on every market simultaneously — 
assumptions, of course, which are never justi- 
fied. The typical inventor, in placing a value 
on his own invention, is far too prone to base 
his estimate solely on these factors — the profit 
per article and the extent of the potential 
demand. These are the fundamental and 
vital factors, but no greater mistake can be 
made than to consider them the only ones. 

The secondary factors are equally vital and 
the successful man of affairs will always want 
to consider an invention from the following 
points of view: 

(1) How much capital, time and ex- 

ecutive ability will be required to 
develop the invention to the point 
where it can be put on the market. 

(2) How much of the same elements will 

be required to exploit the inven- 
tion when developed. 

It will readily be seen that the more these 
outside elements are required to make a suc- 
cess of the invention, the less is the share 
of its value that the actual inventor can lay 
claim to. It is commonly recognized that 
capital is entitled to some share in the re- 
wards ; it is commonly charged that the share 
of capital is vastly out of proportion to the 



138 PATENTING AND PROMOTING 

share of the inventor; it is commonly for- 
gotten that if the history of almost any suc- 
cessful invention is analyzed it will appear 
that more inventors' talent, genius, call it 
what you will, is shown in devising methods 
for the successful exploitation than in the 
actual discovery of the invention, and that 
more often than not it is capital that supplies 
these qualities. 

We have postponed until now the question 
of the patent protection simply for conven- 
ience and not for the reason that it should 
necessarily be considered last. That will 
depend on circumstances. If the examina- 
tion of the patent situation is a simple matter 
and the determination of the other factors 
highly complex — as is often the case— it will 
obviously be prudent first to make sure of the 
patent protection, as a short examination may 
show that there is no real protection and a 
lengthy examination of the factors would 
therefore be a waste of time. 

An examination of the patent situation 
naturally falls into three parts : 

(1) Ai^e there other patents in existence 
which would prevent the use of the 
patent in question? For instance, 
suppose the latter consisted in the 
combination of three elements, A, 



EVALUATING A PATENT 139 

B and C. It might very well prove 
to be the case that some one else 
had a patent on the combination 
of elements A and B. 

(2) Are the claims of the patent so drawn 

that the patent is not only valid but 
that it affords protection against 
anyone accomplishing the same re- 
sult by a purely technical substitu- 
tion of means? 

(3) What are the probabilities of com- 

petition developing by means of a 
new invention? 

Emphasis has been laid in the chapter on 
patent attorneys on the necessity of a good 
patent attorney having a wide technical 
knowledge, and it is the possession of this, 
rather than his knowledge of patent law, that 
makes his opinion on a patent situation valu- 
able. The industrial engineer has, as a 
rule, a much wider technical knowledge from 
the practical standpoint, and an infinitely 
greater commercial knowledge, so that he is 
the logical person to pass on the value of a 
patent. Should a highly delicate point occur 
in connection with the patent situation, he 
will undoubtedly call in the best expert ad- 
vice obtainable, just as he would in any other 
branch of his work. 



CHAPTER VIII. 
PROMOTING AN INVENTION. 

1. Bankers. 2. Private Banks. 3. Eequirements for Banking. 
4. Individual Finances. 5. Syndicate Financing. 6. Patent 
Selling Abuses. 7. Advertising Stock Salesman. 8. Pro- 
motor. 9. Ee/porting Agencies. 10. Commercial Agency. 
11. Promotion. 12. Worth of an Invention. 13. Steps for 
Development of an Invention. 14. Westinghouse, George. 15. 
Legitimate Promoter. 16. Legality of Promotion. 17. In- 
sufficient Financing. 

There has always existed a decidedly erron- 
eous impression on the part of inventors as a 
class that a perfected invention is a banking 
proposition. There are even those who imag- 
ine that a patentable idea, even though unde- 
veloped, merits the financial co-operation of 
the banker. Both these fallacious impressions 
lead to much misunderstanding, waste of valu- 
able time and disappointments. 

There are two kinds of bankers repre- 
sented: Those institutions which are char- 
tered by the several States or by the Federal 
Government and therefore under the strict 
supervision of State or Government; and pri- 
vate bankers, made up of individuals who 
bring capital together to create a consider- 
able investing amount, depending upon the 

140 



PROMOTING AN INVENTION 141 

nature of their financial activities. The 
former are only permitted by their charters 
and the banking laws by which they are regu- 
lated to invest along those certain conserva- 
tive channels which will yield a commensurate 
net profit on the public and private moneys 
entrusted to their care. This profit is derived 
from legal rates of interest on loans, and for 
this reason the collateral accepted must pos- 
sess a high degree of safety. The earnings 
therefore depend upon a large turnover of 
loans based upon large deposits. On the other 
hand, while private bankers are at liberty to 
make indiscriminate investments, reputable 
houses are most careful in the selection of 
their investments, particularly as they do a 
large amount of underwriting which is cov- 
ered by the funds of their clients, the profit 
thereon coming in the form of a commission 
depending upon the hazard and the size of the 
underwriting. Their very existence depends 
upon the confidence of their clients, both with 
regard to the securities that they market and 
the handling of the capital entrusted to their 
management, otherwise it would be impossible 
for them to obtain capital to carry on their 
business. Occasional mistakes of judgment 
cannot be avoided, but even one error of this 
nature has sent to the wall many a firm which 
previously enjoyed an enviable reputation. It 



142 PATENTING AND PROMOTING 

will be seen, therefore, that when the import- 
ant private banking houses seek private, par- 
ticularly industrial, investment, it must be of 
the highest character both as to safety and 
potential profits. In order to attract favor- 
able attention from such bankers the enter- 
prise must show a satisfactory record of 
earnings for at least three or four years, ob- 
tained from the manufacture of some stable 
or standard article or device which has defin- 
itely proven its general adoption or demand. 

Many of the munition plants which sprung 
up almost overnight after the outbreak of the 
European war received little assistance from 
private bankers, and those that did receive 
such assistance, in most cases proved a great 
anxiety to the bankers who backed them. The 
percentage of these plants that have made 
visible profits is small, and in these cases the 
success was largely due to foresight and keen 
managerial ability. 

On page 67 will be found a reference to an 
invention that was saved by an expert inves- 
tigation that revealed the fact that there was 
an apphcation still pending in the Patent 
Office for a patent which it was necessary to 
obtain to make the device commercially pos- 
sible. The machine in question is a voting 
machine, which undoubtedly has a future, and 
is at present perfected. Its commercial field 



PEOMOTING AN INVENTION 143 

is large, and over half a million dollars has 
been expended on its development. 

Nevertheless we have here an example to 
show why even a perfected invention of un- 
doubted merit is not a banking proposition, in 
this specific instance for the following 
reasons : 

1. Its assets consist entirely of the estimated 
value of the patents. 

2. No sales as yet, of any amount. 

3. No record of earnings. 

4. No capital. 

5. No underwriting by a financial backer. 

Hence it should be thoroughly understood 
that merit in an invention does not in itself 
constitute it a banking project^ even though it 
be completed to the last stage of refinement. 
The illustration cited is not even one for a pri- 
vate banker to consider, even though he is leg- 
ally in a position to do so. The banker who 
risks his capital or the capital of his clients 
following such ventures will not long escape 
bankruptcy. , 

Therefore it must be further understood 
that a State or Federal bank will lend money 
only to going concerns that can render a state- 
ment showing commensurate earnings for a 
period of years, and a balance or surplus in 
their favor ample to protect the interests of 
the bank. 

Private banking houses make fewer loans 



144 PATENTING AND PROMOTING 

than the chartered institutions. On the other 
hand^ they will finance private enterprises 
that can show that their business is earning 
money but is in need of additional capital to 
take care of increasing business, or to over- 
come the disadvantage of widely distributed 
debt; the plan being to concentrate all such 
indebtedness into an issue of securities that 
automatically increases the credit of the con- 
cern. 

A proposition presented to a private bank- 
ing house should be submitted in much this 
form, with such variation as would meet the 
particular case: 

1. Monthly sales for previous two, three or 
more years. 

2. Monthly expenses for corresponding period. 

3. Contracts on hand. 

4. Balance sheet showing each year's condi- 
tion, after deducting for depreciation. 

5. A concise explanation as to exactly how the 
additional capital which is sought is to be 
used, whether for enlargement of business 
or to liquidate accounts payable. 

6. Present capitalization and bonded indebted- 
ness. 

7. Proposed capitalization and bonded indebt- 
edness. 

It should now be perfectly clear why a new 
proposition, particularly one based upon an 
invention, does not possess the requirements 
of the banker, private or otherwise. 

Rumors often become current that a certain 
prominent private banking house is behind 



PROMOTING AN INVENTION 145 

some particular invention, but it will be found 
upon proper inquiry that some individual con- 
nected with such a firm of bankers is doing 
the financing entirely on his own responsibil- 
ity, and independent of the funds of his con- 
cern. As a matter of warning, an inventor 
should not consider it appropriate to expect 
financial aid from such firms, nor should an 
individual interested in such banks permit 
any inference which would identify his own 
personal investments with those of his own 
banking house. Such rumors militate against 
the standing of these institutions. 

The only recourse for the inventor, there- 
fore, whether his invention be undeveloped, 
perfected or in the process of commercializa- 
tion, is to seek the co-operation of the private 
individual or a group of individuals, who will 
join together to form a syndicate or a cor- 
poration, based on shares, whereby the inven- 
tor, as also the financial men, are paid in 
shares based upon whatever value, agreeable 
to those in interest, is placed on the invention 
and on the money invested. 

It must be discouraging to a great number 
of inventors to find that the really established 
avenues of finance are closed to them, but 
greatly as we wish to see the inventor encour- 
aged in every practical way, we should hardly 



146 PATENTING AND PROMOTING 

wish to see our banking houses jeopardize 
their standing by investing funds in proble- 
matical enterprises, no matter how alluring 
or promising the prospects. 

Under existing conditions the inventor is 
confronted with most trying difficulties when 
he attempts to turn his ideas into cash, since, 
unless he be possessed of sufficient funds to 
carry on his work, he must seek assistance 
from any source he can find. 

We have seen how easy it is for the inventor 
to fall a victim to the honeyed words and ques- 
tionable methods of the unscrupulous patent 
attorney. If the inventor is fortunate enough 
to escape the webs of deceit woven by these 
legalized spiders, he must still beware of other 
traps which are carefully set for the unwary 
and uninitiated. No sooner has a patent been 
published in the Official Gazette than the in- 
ventor will receive many communications 
from all manner of concerns offering to secure 
a purchaser for his invention. Many of the 
advertising patent solicitors make this a 
branch of their business, frequently carrying 
on the scheme under a different name. If the 
inventor takes any of these offers seriously 
he will never see his patent sold, but will, as 
the expression goes, be ^^sold^' himself unless 
he discovers the trick in time. 

One of the methods most commonly em- 



PROMOTING AN INVENTION 147 

ployed by these Patent Selling tricksters is 
much as follows: 

Almost immediately after his patent is 
issued the patentee is sent a letter to this 
effect: 

^'We have noted your patent No. , and 

are greatly interested. If you will consider 
an offer for your rights, kindly advise us at 
once.^' 

If the inventor foolishly replies in the 
affirmative, he will then receive a masterpiece 
of chicanery in reply stating that their expert 
considers the invention worth not less than 
$25,000 (the amount will vary, according to 
the frame of mind of the mythical expert), but 
that the purchaser wishes to assure himself 
of the validity of the patent, which will entail 
an expense of say $50 to cover the fee of the 
patent expert. They will generously offer to 
divide this expense with the inventor. If the 
twenty-five dollars is forthcoming, the alleged 
patent attorney will at once declare the patent 
invalid, and the inventor has no recourse but 
to charge off the amount to Experience Ac- 
count. 

Many of these patent selling concerns for- 
ward contracts to be signed, with the assur- 
ance that a purchaser is impatiently waiting 
to secure the patent. An advance fee to cover 
incidental expenses is invariably demanded, 



148 PATENTING AND PROMOTING 

and in such fees lies the entire source of the 
ill-gotten gains of these concerns for, as they 
never effect a sale, they never receive a legit- 
imate commission. Many of then give bank 
references, which is another form of adver- 
tising humbug. So great have been the abuses 
along these lines that the Commissioner of 
Patents has recommended that action be 
taken by the postal authorities, with a view 
to denying them the use of the mails. 

To avoid losing money in schemes of this 
kind the inventor should either consign all 
communications offering such service to the 
waste basket, or refer them to his personal 
attorney for attention if he thinks any are at 
all worthy of consideration. 

Another source of danger to the inexperi- 
enced inventor is the advertising stock sales- 
man. Such individuals or concerns have 
sprung up in abundance during the past two 
decades, and it is really astounding the 
amount of money they have been able to glean 
from unsophisticated inventors. In most 
cases they claim a large following of inves- 
tors, and hold out very promising offers. In 
point of fact, this following which they claim 
amounts to little more than a list of names, 
these being purchased from firms who make 
the selling of such lists a part of their busi- 
ness. In some cases these stock selling con- 



PROMOTING AN INVENTION 149 

cerns have their own lists, which they them- 
selves compile from sources good and bad. 
There is one thing that the inventor can 
always depend upon in connection with the 
stock-selling salesmen, and that is that he 
will invariably be called upon to pay a certain 
fee in advance, which the salesman claims is to 
cover certain expenses for printing and ad- 
vertising. If this be paid, they represent that 
this is all that will be required of the client, 
as they expect to get their profit from com- 
missions on the sale of the stock. This sounds 
fair enough, but it is far from true. There 
will be a charge of ten cents for every letter 
they propose to send to their alleged clientele. 
This list of investors is dangled before the 
eyes of the capital seeker as something akin 
to the muster roll of a volunteer regiment 
nervously awaiting the call to the colors. The 
number of names included in these lists varies 
from 2,500 to 5,000, making the cost for such 
service from $250 to $500. It can readily be 
appreciated that such offers would appeal to 
the credulous inventor, particularly when so 
many of those who consider themselves in- 
ventors are far from practical business men. 
They figure that if 3,000 of these finely 
worded letters are sent out to 3,000 investors 
of the type they are led to believe compose 
the list, it will be a simple matter to raise at 



150 PATENTING ANT) PEOMOTING 

least $30,000 in a very short time, as this 
would represent a favorable reply from but 
300 out of the 3,000, with an average of a $100 
subscription from each. It is usually possible 
for a man to raise $300 by borro\\ing from 
friends or parting with his last possessions, 
and this is all too frequently just what occurs 
to an inventor who becomes impressed by 
the offers of the flippant stock salesmen. It 
looks very fine indeed on paper, but if the 
$30,000 actually materialized and the stock 
salesman survived the nervous shock, it is 
more than likely that his fertile mind would 
at once become inspired by some other scheme 
whereby a goodly portion of this ready money 
would go the way of the advance fee; namely, 
into his ovm pocket. However, such a phe- 
nomenon is not likely to occur, for the men 
who practise these methods of raising capital 
on the letter charge plan are always ready to 
attempt any project that comes their way, 
regardless of its merits or demerits. All re- 
ceive the same treatment, anything being a 
good proposition provided there is an advance 
fee in sight. These fees, as in the case of the 
patent selling agents, are the mainstay of the 
business, for if they depended upon commis- 
sions for a livelihood, they would soon face 
stan^ation. No attempt is made at investi- 
gating the merits of the propositions sub- 



PEOMOTING AN INVENTION 151 

mitted, and for this reason alone it is easy 
to understand that such methods mean noth- 
ing but expense and disappointment to the 
inventor. Loss of valuable time and the pos- 
sibility of spoiling the chances of a good in- 
vention are also important elements to be 
considered in this connection. 

There have been exceptional instances 
where these concerns have met with success, 
but it has been entirely accidental and due to 
some unexpected response from a few of the 
recipients of the letters sent or exceptional 
merit in the invention. So rare are such in- 
stances that they may be considered negli- 
gible, for where the public is invited to invest 
in every manner of project, without the prior 
investigation of merit that is usual with re- 
sponsible houses, the results are of necessity 
disastrous both to the inventor and to the few 
investors who are caught by the rosy prom- 
ises of the follow-up letters. 

Much the same methods are employed by 
a certain type of promoter who likewise de- 
mands an advance fee to cover the cost of 
preparing and mailing the prospectus, or 
letters, as the case may be, but who further 
insists that he be retained in the capacity of 
company organizer. For this he will demand 
an excessive fee, claiming that such a fee is 
virtually the same as would have to be paid 



152 PATENTING AND PROMOTING 

to a corporation attorney for his legal work 
in connection with incorporating the company 
that seeks capital. He likewise has an inves- 
tors' list which he represents will prove most 
valuable when the stock is offered for public 
subscription. 

These self-styled capital procurers form a 
very numerous fraternity throughout the 
country, and much of the evil repute associ- 
ated with the word ^^invention^' in commercial 
circles is due to the unscrupulous operations 
of these cheap schemers. They obtain millions 
from the savings of the credulous public, all 
of which goes to absolute waste, since no indi- 
vidual proposition ever obtains the necessary 
funds expected by the innocent capital seeker, 
to accomplish any substantial result. Even 
the money that is obtained is usually and 
wilfully dissipated in trumped-up expenses 
and commissions. Where the bulk of this vast 
amount of money goes is not difficult to sur- 
mise. False promotions have left behind 
them a trail of sorrowful investors almost as 
numerous as the mourners of our Civil War. 

This deplorable condition of affairs could 
be immeasurably improved if everyone seek- 
ing capital would only avail himself of the 
simplest of existing channels of information, 
namely, the old established reporting agen- 
cies, such as Bradstreet's or Dun's. There are 



PROMOTING AN INVENTION 153" 

many well-known commercial agencies that 
make a specialty of reporting upon the moral 
and financial responsibility of individuals. 
The fees are very moderate, and it takes an 
exceedingly crafty man to deceive the trained 
investigators employed by these concerns. 
Much of their work is done for the large life 
insurance companies in investigating appli- 
cants for substantial lines of insurance, and 
the accurate manner in which the desired 
information is secured, even to the minutest 
detail, is truly commendable. 

The following is a copy of a report fur- 
nished by a prominent New York commercial 
agency on the standing of one of the common 
types of ^'faker" we have just discussed. 
Other names have been substituted ; otherwise 
the report is printed verbatim. 

Strictly Confidential For Your Own 
Personal Use Under the Terms 
OF Our Contract. 
Gentlemen : 

In reply to your inquiry concerning S. S. Blank 
& Co., — Broadway, we beg to report that the 
person trading under this firm name (not regis- 
tered in the County Clerk's office) is an oily- 
tongued, cunning old rascal named R. M. Blank, 
aged about 60. Prior to a year ago he resided in 
an apartment on East 117th Street, where he was 
either a boarder or sub-tenant, as there was no 
lease in his name. 

Blank shares the office at — Broadway with 
other questionable characters, among whom are 
R. C. Down and R. F. Down, who lease the office. 



154 PATEXTIXG AXD PROMOTING 

They operate a new corporation called the Down- 
ing Corporation of which Blank is Secretary. 

Blank has persistently refused to give any in- 
terview that would tend to reveal his real char- 
acter. We know that in 1899 he posed as a real 
estate man, having an office at — Broadway, at 
the same time his name appeared as ''Manager'' 
in the directory at another address. He first be- 
came active in the down-to\^Ti section in 1898. He 
then was supposed to have partners, but these 
men, if they ever existed, we have been unable to 
trace. Since that time he has been located at at 
least a dozen different addresses. He flatly re- 
fused to discuss these alleged partners, or in fact 
to give any information concerning his business 
affairs. 

In 1901 Blank was given as President of the 
Jupiter Power Company, and the Mid-Atlantic 
Mining and Milling Company, both of which con- 
ceiTis appear to have long since petered out. 
Among other concerns of which Blank claims to 
have been fiscal agent, and which have all utterly 
disappeared since 1908 are : 

South Pacific Mining Company. 

Delaware Oil Company. 

Rio Nu\ida Copper Mining Company. 

Utica Glass Works Company. 

Straw Fertilizer Company. 

Moose Mountain Radium Mining Company. 

The character of the many inquiries received by 
this Agency for the past few years, together with 
the advertisements inserted in the daily papers 
under the name of S. S. Blank & Co. offering to 
secure capital, verj^ clearly indicate that the said 
Blank without any real financial connections, and 
without, as far as we can discover, any success in 
capital raising, must derive his income through 
some plan of obtaining advance fees from people 
seeking capital which he cannot furnish. 

We wish to call attention to the character of the 
advertising used by Blank. 



PEOMOTING AN INVENTION 155 

In the "Herald/' Sept., '05, appeared: 
Capital Enlisted — Stocks and Bonds Sold. 
We procure capital for industrial enter- 
prises, manufacturing establishments, min- 
ing, business and other legitimate purposes. 
Stock companies incorporated and 
financed; loans negotiated; our long experi- 
ence, our connections and success with cap- 
ital guarantee quick and efficient service. 
00 Wall Street, New York. 
Est. 1894. 
S. S. Blank & Company, 
Bankers and Brokers. 

In the "Herald," March, '09, appeared : 
Do You Desire 
to 
Intelligently Increase 
The Earning Power of Your Money? 
7% offered to investors in the Preferred 
shares by a large and prosperous nearby 
firm perfectly sound in condition and man- 
agement; $50,000 spent in development, 
hence far beyond the experimental stage; 
additional capital needed to properly care 
for rapidly increasing business; opportuni- 
ties like this are few and far between ; speak 
up quickly, requesting a booklet for full in- 
formation. 

S. S. Blank & Co., Agents, 
00 Wall Street, New York. 

In the "Herald'' of July 14th appeared : 

Capital Enlisted 

for manufacturing, industrial enterprises or 

any legitimate proposition, through sales of 

stocks and bonds on commission ; companies 

incorporated; established 1894. 

S. S. Blank & Co., 

1115 Broadway, New York. 

Yours truly, 

X's Commercial Agency. 



156 PATENTING AND PROMOTING 

It is not difficult to imagine, after reading 
the foregoing report, what would happen to 
the unfortunate inventor with a small amount 
of money at his command if he fell into the 
hands of this wily Blank, The advertisements 
attached are typical of those generally em- 
ployed by these financial sharks. 

Viewed in its largest ethical sense, promo- 
tion is a most important and interesting prob- 
lem, having for its basis the development of 
natural resources and the enrichment of the 
public. This is a salient reason why so many 
people are quickly interested in any new 
scheme which seems at all plausible. If pro- 
moters aimed primarily for industrial im- 
provement, there would be little cause for 
complaint or criticism, but far too often even 
men of a better type than Blank are actuated 
solely by selfish motives, and are not over- 
scrupulous in the means they employ to obtain 
their ends. Some do not hesitate to force 
false interpretations from engineers' reports, 
making deductions never dreamed of by the 
authors. Even when not dishonest, promoters 
are apt to be over-sanguine, extravagant and 
given to taking undue risks. Their blunder- 
ing methods are a severe tax on the public and 
when the day arrives when the prospective 
investors appreciate the necessity of scientific 



PEOMOTING AN INVENTION 157 

investigation, their unbusinesslike activities 
will be curtailed. Of course, there have been 
instances where unskilled promoters have 
accomplished great things in spite of them- 
selves, but such cases are extremely rare. 

The promoter who is both efficient and 
honest will never attempt to exploit an inven- 
tion which has no commercial worth, that is, 
something that cannot be marketed at a rea- 
sonable price, and at a satisfactory profit to 
the investor. The marketing of such an in- 
vention constitutes successful promotion, but 
before one proposition of this kind can be 
found, perhaps hundreds have to be exam- 
ined. Once a selection is made, a thorough 
investigation is ordered and the result is used 
for guidance. Under no circumstances will 
the promoter assume the responsibility of this 
sort of investigation, but will delegate the 
work to experts in this line. 

In determining the worth of a new inven- 
tion it must be borne in mind that no invention 
has commercial value unless upon analysis it 
is found to possess the following require- 
ments : 

1. It should meet a popular industrial demand. 

2. It should be essentially a new device, and 
not a mere improvement upon something 
already in universal use. Improvements, 
unless invented because of specific demand, 
are seldom worth considering commercially. 



153 PATENTING .IXD PROMOTIXG 

3. It should be able to stand upon its own 
merits and not rely upon coercion to bring 
about its adoption. 

4. It should not be too costly to build or too 
expensive to operate. 

The commercial value of any device once 
established by its passing the foregoing tests, 
the actual development of the invention should 
proceed in the follov^ing logical order: 

1. No time or pains should be spared to bring 
about the best design. It costs far less to 
lay out an invention on paper than to build 
unworkable models. 

2. The models, particularly the first, should 
be very accurate. The best tool makers 
should be employed in this work, for if the 
model is mechanically perfect it may aid in 
detecting possible errors in design. If both 
model and design are accurate and the de- 
\ice does not function properly, it follows 
that the principle of the invention is wrong. 

3. No model should be put to industrial use or 
I exhibited ^"^ith the view of securing capital 
f until a thorough actual test of its mechani- 
' cal reliability has been made by the inventor 

or by disinterested engineers. 

4. Upon the satisfactory completion of this 
te^t, a manufacturing model should be built 
embodying such changes in the original 
model as are needed to facihtate the proper 
manufacture of the various parts and their 
proper assembling. 

5. The manufacturing tools, jigs and fixtures 
should be made immediately after this last 
model. 

6. A thorough investigation of the commer- 
cial field should go forward while the tools, 
etc., are being made, to approximate as 
nearly as possible the proper size of the 
contemplated output. The minimum amount 



PROMOTING AN INVENTION 159 

of the new product should be manufac- 
tured, in order that there may not be a 
worthless overstock on hand should the 
device prove a disappointment, or in case 
some radical change be subsequently de- 
cided upon over the original design. 
7. The product, if a mechanism of many parts, 
should usually be assembled only on order. 
A few complete examples may be kept in 
stock for quick delivery. 

The steps indicated are quite definite and 
may be taken as a safe rule of conduct. Not 
only do they entirely eliminate the usual hit- 
or-miss method of exploiting a new invention, 
but also furnish a basis for calculating the 
expense involved and the capital necessary, 
both of which can thus be estimated with a 
fair degree of accuracy in advance. 

In the early part of this chapter it was 
stated that the inventor, in order to get an 
invention before the public, must seek the 
cooperation of an individual or group of indi- 
viduals who will form a syndicate or company 
to provide the necessary capital to place the 
project on a commercial basis. It would seem 
from a careful consideration of past experi- 
ence that there is no subject in the field of 
business less understood than proper financ- 
ing, particularly of a new project. There have 
been many men exceptionally distinguished as 
producers, organizers and salesmen, who were 
wholly unfitted to cope with the financial prob- 



160 PATENTING AND PROMOTING 

lems incident to their undertakings. That 
brilliant inventor and organizer, the late 
George Westinghouse, was a signal example 
of this very thing, for Mr. Westinghouse 
made a real success of every enterprise he 
attempted, except where the financing was 
concerned. Erring in his early arrangements 
properly to provide his enterprises with the 
cash necessary to finance their natural growth, 
he was on two occasions confronted by serious 
embarrassment, and finally resigned from the 
management of the Westinghouse Electric 
and Manufacturing Company. 

There can be no doubt as to the legitimacy 
or benefits of the promotion of sound or poten- 
tially valuable enterprises. It is the legitimate 
promoter who seeks out the opportunity and 
converts it into a reality. In its true signifi- 
cance the term ^^promoter'' should be an 
honorable title. The term as applied to those 
swindlers who deceive the inventor and prey 
upon the public by the sale of worthless stock 
is distinctly a misnomer. ^'Deluders" would 
be a much more appropriate term. 

The legal status of the promoter is rather 
an abnormal one, since he is frequently the 
representative of an enterprise that is his own 
creation but not really in existence, for often 
it is not yet being formed or incorporated. 
The promoter's actions or his promises cannot 



PROMOTING AN INVENTION 161 

legally bind the corporation, although as an 
individual he can be held responsible to the 
corporation for the proper consummation of 
the arrangements concluded in its behalf. 
Furthermore, he stands in a limited trust 
relationship, both to the corporation he has 
promoted and to those who have invested in 
its securities. Such a relationship forbids his 
making secret profits at the expense of the 
corporation, and any reasonable profits which 
may accrue to him must be known to all con- 
cerned, otherwise he is guilty of fraud. 

It has been clearly demonstrated by past 
experience that an entirely new project that 
has not gone beyond the point of the idea 
upon which it is based, and therefore has 
not been subjected to the vicissitudes which 
it must eventually encounter, appeals strongly 
to the imagination, and can, if handled with 
the proper judgment, usually command capi- 
tal with comparative ease. On the other hand, 
the same project, after it has weathered the 
experimental stage, and has proven its merit, 
will have lost that original element of appeal 
and will command further support with great 
difficulty. 

One of the commonest errors, therefore, in 
the organizing of a new corporation, and one 
which is often fatal to the enterprise, is to 
begin with insufficient funds to guarantee its 



162 PATENTING AND PROMOTING 

success. Credit is not available for most new 
firms or corporations for the reasons stated 
at the beginning of this chapter. Hence when 
an enterprise which has started off with a 
promise of large profits is threatened with 
collapse through lack of working capital, the 
organizers must seek aid by means of an addi- 
tional issue of stock, and will find that they 
are usually met with skepticism or rebuff. All 
successful promoters are therefore of one 
mind in regard to the amount of capital de- 
manded at the time of organization. 

Here again is shown the importance of an 
expert investigation into every ramification 
of a commercial project, for by such an 
analysis a very accurate approximation of the 
needed capital can be arrived at, and if due 
allowance be made for possible contingencies, 
which can not be anticipated in advance, 
there should be little chance of failure from 
the start until the enterprise is firmly estab- 
lished and entitled to credit from banking 
institutions. 

The instances where meritorious enterprises 
have failed solely on account of lack of fore- 
sight on the part of the organizers to provide 
sufficient capital at the beginning of opera- 
tions are so numerous that no doubt the 
reader can call more than one to mind. 

The following, recently published in a vol- 



PROMOTING AN INVENTION 163 

ume on business finance*, will serve as a 
typical example : 

''About two years ago I was induced to pur- 
chase stock in the Smith Manufacturing Com- 
pany,** which owned the patents and intended to 
manufacture and sell an office equipment device. 
Only one other person was interested and he took 
an equal amount of stock and was to be the active 
man at $150 per month. It was nearly six months 
before we were able to get our dies constructed 
and sufficient stock on hand to go after the busi- 
ness, and this work took much more money than 
we anticipated. We also had trouble with our 
finish and replaced a lot of our devices which we 
had placed in the first few months. Manufactur- 
ing difficulties were finally overcome and we have 
no further complaints on that score. Our difficulty 
now is to market the product. Sales for the year 
have only been about 2,500 units. 

Up to this time about $20,000 has gone into the 
business, and as yet we are hardly making ex- 
penses on average monthly sales of $1,000. It 
has come to the point now where we must find a 
more profitable method of merchandising, sell out, 
or liquidate. We would prefer to sell out, but we 
have nothing very encouraging to offer a pur- 
chaser, so it resolves itself into one of the other 
two. A first-class merchandising man, in whom 
both of us feel confidence, could be secured if we 
we were in a position to put in another year. Per- 
sonally I am convinced that with the right plan 
of sale, the whole project would be a tremendous 
money-maker, but we haven't the money our- 
selves, don't know where to turn , for it, and haven't 
much of a record to fall Ixack upon." 

Among inexperienced promoters the tend- 
ency is to underestimate the amount of capital 

♦Business Finance by Lrough. 
**The name is fictitious. 



164 PATENTING AND PROMOTING 

required, but the real promoter, the man who 
enjoys the confidence of substantial investors, 
seldom is caught napping in this regard. In 
many cases all his profits in the promotion 
depend upon the success of the enterprise. 

It is often the case that an inventor through 
lack of proper association is unable to get his 
invention to the attention of those who can 
properly advise him as to the best course to 
pursue. In such cases the inventor should 
consult with his local banker, who could un- 
doubtedly, through his varied affiliations, put 
him on the right track at least. 



CONCLUSION. 

In the preceding chapters the reader has 
been given an insight into the peculiar condi- 
tions surrounding the development of a new 
invention and been told of the manifold diffi- 
culties which impede the work of an inventor, 
often to such an extent that the fruit of his 
labor is lost to him utterly. Many an embry- 
onic invention of valuable potentiality is 
remembered only as a failure because it never 
reached perfection, its superficial defects en- 
tirely overshadowing its essential soundness 
and merit. 

Certainly some better means than exists 
at present should be provided for the encour- 
agement of inventors, and to enable them to 
get financial cooperation. 

It has often been asserted that there can 
be no law which may be invoked to control 
the temperamental nature of the inventor. His 
is a soul beset with doubts and disappoint- 
ments and frequently worn by struggle. Lack 
of money prevents his talents from developing 
to their full extent, and not one of our philan- 
thropic institutions is in a position to give 
him the aid that is most important to him. 
Yet it is perfectly conceivable that a sensible 

165 



166 PATENTING AND PROMOTING 

means might be found to lessen his financial 
burden and handicap, and at the same time 
benefit our industrial gro\^i:h. 

At the present writing, both Europe and 
America boast of many institutions for the 
encouragement of scientific research, but all 
of these are conducted on purely theoretical 
lines, and there exists no organization that 
both encourages research and provides the 
means of placing the result before the people 
commercially. It would seem opportune, 
therefore, and of immeasurable importance 
that an institution be created for such pur- 
pose. 

Primarily, the object of such an organiza- 
tion would be to contribute to the advance- 
ment of science, but more particularly to 
encourage and facilitate scientific research 
along commercial lines. It is creative work 
of this nature that stands in the greatest need 
of financial cooperation. Thus the splendid 
wealth of latent talent, retarded in its devel- 
opment for lack of funds and other causes, 
would find expression in tangible results and 
benefits for all. 



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